Brent A. Altomare v. Raul Velazquez
Claim Number: FA0905001264621
Complainant is Brent
A. Altomare (“Complainant”), represented by Mitchell P. Brook, of Luce, Forward, Hamilton & Scripps LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <autotradergratis.com>, registered with Wild West Domains, Inc.
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 electronically on May 22, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 28, 2009.
On May 26, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <autotradergratis.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. 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 May 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 18, 2009 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 postmaster@autotradergratis.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 22, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autotradergratis.com> domain name is confusingly similar to Complainant’s AUTOTRADER mark.
2. Respondent does not have any rights or legitimate interests in the <autotradergratis.com> domain name.
3. Respondent registered and used the <autotradergratis.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Brent A. Altomare, has registered its
AUTOTRADER mark with the Mexican trademark authority (Reg. No. 489,953 issued
February 20, 1995). Complainant uses the
AUTOTRADER mark in conjunction with its used vehicle advertising and sales
services targeted at the Spanish-speaking market in
Respondent registered the <autotradergratis.com> domain name on July 27, 2008. The disputed domain name is being used to resolve to a Spanish-language website offering used car sales services that are identical to Complainant’s. Respondent indicated its willingness to sell the disputed domain name to Complainant for $5,000.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar 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 and is being used in bad faith.
The Panel finds that Complainant’s registration of its AUTOTRADER mark with the Mexican trademark authority is sufficient to satisfy Policy ¶ 4(a)(i). The Panel determines that it is irrelevant for the purposes of Policy ¶ 4(a)(i) whether Complainant has registered its trademark in the country of Respondent’s residence. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant contends that Respondent’s <autotradergratis.com> domain name is confusingly similar to its AUTOTRADER mark under Policy ¶ 4(a)(i). The <autotradergratis.com> domain name incorporates Complainant’s AUTOTRADER mark in its entirety with the addition of the generic Spanish term “gratis,” meaning “free,” and the generic top-level domain “.com.” The Panel finds that the addition of the generic Spanish term “gratis” to Complainant’s AUTOTRADER mark fails to alleviate the confusing similarity between Complainant’s mark and Respondent’s <autotradergratis.com> domain name. Additionally, the Panel concludes that that the addition of the generic top-level domain “.com” is insufficient to distinguish the disputed domain name from Complainant’s mark. See State Farm Mut. Auto. Ins. Co. v. Rodriguez, FA 612779 (Nat. Arb. Forum Jan. 22, 2006) (finding that Respondent’s disputed domain name is confusingly similar because “Respondent’s domain name incorporates Complainant’s mark in its entirety and merely adds “seguro” and the generic top-level domain “.com.” “Seguro,” Spanish for “insurance,” [which] directly describes an important component of Complainant’s business”); see also Am. Online, Inc. v. Villanueva, FA 236589 (Nat. Arb. Forum April 2, 2004) (“The addition of the generic French and Spanish words is insufficient to distinguish the domain names from Complainant’s marks.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel finds that Complainant’s AUTOTRADER mark and Respondent’s <autotradergratis.com> domain name are confusingly similar under Policy ¶ 4(a)(i).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the <autotradergratis.com> domain name. Complainant must first establish its prima facie case to support these contentions, and the Panel finds that Complainant has done so in these proceedings. Once Complainant has produced a sufficient prima facie case, the burden shifts to Respondent to show that it does have rights or legitimate interests in the <autotradergratis.com> domain name under Policy ¶ 4(c). Respondent failed to submit a response in these proceedings, thus the Panel may infer that Respondent lacks rights and legitimate interests in the disputed domain name. However, the Panel will review the record to determine whether Respondent has any rights or legitimate interests in the <autotradergratis.com> domain name under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
The disputed domain name resolves to a website that offers services
in direct competition with Complainant.
Complainant contends that Respondent’s use of a confusingly similar
domain name to operate a competing website, intending to pass itself off as
Complainant, is not a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) or (iii), respectively. See Coryn Group, Inc. v. Media
Insight, FA 198959 (Nat. Arb. Forum Dec.
5, 2003) (finding that the respondent was not using the domain names for a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use because the respondent used the names to divert Internet users to a website
that offered services that competed with those offered by the complainant under
its marks); see also Mortgage
Research Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is
also attempting to pass itself off as [the] complainant, presumably for
financial gain, the Panel finds the respondent is not using the
<mortgageresearchcenter.org> domain name for a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel concludes that Respondent’s
use of the disputed domain name does not constitute a bona fide offering
of goods or services or a legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) or (iii), respectively.
Respondent’s
willingness to sell the disputed domain name to Complainant for $5,000, in
excess of Respondent’s out-of-pocket registration costs, is further evidence
that Respondent does not have rights or legitimate interests in the <autotradergratis.com>
domain name. The Panel concludes Respondent’s intentions to sell the disputed domain
name to Complainant for $5,000 suggests that Respondent has no rights or
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”); see
also Vance
Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt
by a respondent to sell a domain name to a complainant who owns a trademark
with which the domain name is confusingly similar for an amount in excess of
out-of-pocket costs has been held to demonstrate a lack of legitimate rights or
interests.”).
Furthermore, Complainant contends that Respondent is not commonly known by the <autotradergratis.com> domain name pursuant to Policy ¶ 4(c)(ii). The WHOIS information lists the registrant as “Raul Velazquez.” This information suggests that Respondent is not commonly known by the <autotradergratis.com> domain name and there is no evidence in the record to suggest otherwise. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent has engaged in bad
faith registration and use of the disputed domain name pursuant to Policy ¶
4(b)(i) based on Respondent’s offer to sell the disputed domain name to
Complainant for $5,000. The Panel agrees
and finds that Respondent’s willingness to sell the disputed domain name to
Complainant for an amount in excess of its out-of-pocket costs constitutes bad
faith registration and use under Policy ¶ 4(b)(i). See Towmaster, Inc. v. Hale, FA 973506
(Nat. Arb. Forum June 4, 2007) (“Respondent offered to sell the disputed domain
name to Complainant for $4,000. The
Panel finds that [this] offers to sell the disputed domain name constitute bad
faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Dollar Rent A Car Sys., Inc. v. Jongho, FA 95391 (Nat. Arb. Forum
Sept. 11, 2000) (finding that the respondent demonstrated bad faith by
registering the domain name with the intent to transfer it to the complainant
for $3,000, an amount in excess of it’s out of pocket costs).
Complainant alleges that Respondent is engaged in bad faith
registration and use of the disputed domain name pursuant to Policy ¶
4(b)(iii). The confusingly similar
domain name resolves to Respondent’s website, which operates in direct
competition with Complainant, targeting the same Spanish-speaking market. Respondent is appropriating Complainant’s
mark to divert Complainant’s customers to Respondent’s competing business. The Panel concludes that such diversionary
tactics likely disrupt Complainant’s business and constitute bad faith
registration and use under Policy ¶ 4(b)(iii).
See
Complainant alleges that Respondent intentionally attempts
to attract Internet users to its disputed domain name for financial gain by
creating a likelihood of confusion with Complainant and its AUTOTRADER
mark. The Panel presumes that Respondent
is profiting from such use. See Busy
Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000)
(finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the
complainant were in the same line of business and the respondent was using a domain
name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract
Internet users to its <efitnesswarehouse.com> domain name); see also Asbury Auto. Group, Inc. v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <autotradergratis.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: June 29, 2009
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