Tuffy Associates Corp. and Car-X Associates Corp. v. carxr
Claim Number: FA1203001434792
Complainant is Tuffy Associates Corp. and Car-X Associates Corp. (“Complainant”), represented by Mark D. Schneider of Gifford, Krass, Sprinkle, Anderson & Citkowski, P.C., Michigan, USA. Respondent is carxr (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carxr.com>, registered with Tucows.com Co.
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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2012; the National Arbitration Forum received payment on March 15, 2012.
On March 16, 2012, Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <carxr.com> domain name is registered with Tucows.com Co. and that Respondent is the current registrant of the name. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 9, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@carxr.com. Also on March 19, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 9, 2012.
On April 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant made the following submissions:
1. Complainant Car-X Associates Corp. is the operator of Car-X Auto Service.
2. Complainant Car-X Associates Corp and Complainant Tuffy Associates Corp. are related companies that jointly own the trademark registrations for the CARX mark.
3. Complainant has registered the CARX mark with the United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 995,481 registered October 8, 1974);
4. Respondent’s <carxr.com> domain name is confusingly similar to Complainant’s CARX mark;
5. Respondent directs the disputed domain name to a Persian language website displaying a variety of links to websites that promote the same goods and services as Complainant , in particular automotive services , advertising the trademarks of other suppliers, offering vehicles and parts for sale and featuring a logo nearly identical to Complainant’s CARX logo;
6. Respondent does not have rights or legitimate interests in the disputed domain name;
7. Respondent has actual and/or constructive knowledge of Complainant and its rights in the CARX mark;
8. Respondent registered and is using the disputed domain name in bad faith by using the disputed domain name to disrupt Complainant’s business and creating a likelihood of confusion for commercial gain.
B. Respondent made the following submissions:
1. Respondent is using the website as a “broadcasting website” to promote professional people who are active in the field of automotive tuning in Iran and feature articles on major car manufacturers and their products;
2. Respondent’s activities are limited to Iran only and only Iranians visit the website while Complainant’s activity is limited only to the U.S.;
3. Respondent is not responsible for selling any products from the website as the listings offered are created by its members and advertised in the “Bazaar” section of the website;
4. Respondent receives no money from the sales and purchases of website members on the website;
5. The business activities of Complainant and Respondent are completely different because Respondent is active as a broadcasting and information-spreading website while Complainant provides services on automobiles;
6. Complainant’s CARX mark is not well-known in Iran and Respondent was unaware of Complainant’s existence, including its logo and trademark;
7. Respondent’s use of a logo similar to Complainant’s was simply a result of Respondent’s inexperience and Respondent has since changed its logo.
C. Additional Submissions
Complainant made the following further submissions which were timely and taken into account by the Panel in reaching its decision.
1.Complainant disagrees with Respondent’s assertions that there is no confusion because the parties engage in different activities, claiming that a substantial overlap exists in the way both Complainant and Respondent carry out their business (i.e., Respondent still offers goods related to vehicle repair for sale on the open market);
2. Due to the similarity of services offered, public confusion is likely;
3. Respondent’s claims regarding an unrelated use are false;
4. Respondent’s geographic location does not prevent confusion because Respondent’s website is accessible from the U.S. and offers products that are also available for purchase in the U.S.
Respondent made the following further submissions which were timely received and taken into account by the Panel in reaching its decision.
1. Respondent had no intention to abuse Complainant’s brand;
2. Respondent reiterates that its website is a broadcasting site, unlike Complainant’s online shop selling products and services
3. Respondent does not sell vehicle parts as the products for sale on its resolving website are offered by its website’s users, not Respondent; Consumers in the U.S. cannot purchase products advertised on Respondent’s website due to U.S. sanctions preventing credit card companies and money service providers from providing service for purchasing products from Iran.
4. Consumer confusion is unlikely due to the different functions of Complainant’s and Respondent’s website, and statistics reveal no confusion or that Internet users have been actually confused by the disputed domain name;
5. Respondent reiterates its claim that no confusion has been created.
1. Complainants are two United States companies who have interests in an extensive and successful group of automotive repair facilities at over 175 locations. Car-X Associates Corp. operates Car-X Auto Service and with Tuffy Associates Corp jointly owns the trademarks under which the business is conducted.
2. Complainants have registered the CARX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 995,481 registered October 8, 1974);
3. Respondent registered the <carxr.com> domain name on July 14, 2010. It resolves to a website website displaying a variety of links to websites that promote the same goods and services as Complainant, in particular automotive services, advertising the trademarks of other suppliers, offering vehicles and automotive parts for sale and featuring a logo nearly identical to Complainant’s CARX logo.
Preliminary Issue: Multiple Complainants
There are two separate named Complainants in this matter: Taffy Associates Corp. and Car-X Associates Corp. and they are therefore multiple Complainants.
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
Complainant states that the two named corporations, Tuffy Associates Corp. and Car-X Associates Corp., are related companies and jointly own the CARX mark asserted in this matter. Complainant submits multiple printouts from the USPTO website, which indicate that both companies are listed as the owners of the CARX mark as assignees of a predecessor-in-interest.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralytic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
“It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it therefore treats them both as a single entity in this proceeding. The matter will therefore proceed in its present form and the Complainants will be collectively referred to as “Complainant.”
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 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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant contends that it has established its rights in the CARX mark by registering it with the USPTO (e.g., Reg. No. 995,481 registered October 8, 1974). Complainant submits multiple trademark certificates issued by the USPTO bearing Complainant’s corporate name, which supports Complainant’s contentions under this provision. The Panel therefore determines that Complainant has established its rights in the CARX mark under Policy ¶ 4(a) (i) by registering it with the USPTO regardless of Respondent’s country of operation or residence. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a) (i) through registration of the mark with the USPTO); 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).
The next question is whether Respondent’s <carxr.com> domain name is confusingly similar to Complainant’s CARX mark and Complainant contends that it is. Complainant submits that the domain name includes the entirety of the mark, merely adding the generic top-level domain (“gTLD”) “.com” and the letter “r.” The Panel finds that neither of the changes differentiates the disputed domain name from Complainant’s CARX mark in such a manner that would negate the two being confusingly similar under Policy ¶ 4(a) (i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a) (i) analysis.”); see also Marriott Int'l, Inc. v. Seocho, FA 149187 (Nat. Arb. Forum Apr. 28, 2003) (finding that the respondent's <marrriott.com> domain name was confusingly similar to the complainant's MARRIOTT mark).
Complainant has thus established the first of the three elements that it must make out.
It is now well established from many prior UDRP decisions and it is generally accepted that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii) and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel is therefore required to examine the evidence and the submissions of the parties to decide whether Complainant has made out a prima facie case.
Having examined the evidence and submissions the Panel finds that Complainant has made out a prima facie case and that it is based on the following considerations:
(a) Respondent has taken Complainant’s CARX trademark and used it in its domain name with the addition only of the letter “r” and the top level domain “.com”.
(b) Respondent has then decided to use the domain name to resolve to a Persian language website that relates to the same general field of activity as Complainant, promotes and advertises products for sale in that area , and features a logo nearly identical to Complainant’s CARX logo; .
(c) Respondent has engaged in these activities without the consent or approval of Complainant.
(d) The registrant of the disputed domain name is “carxr”; however, Complainant submits and it is apparent that the submission is correct, that “Respondent is identified on the CarXr website as the Tejarat Electronic Deljo Company-not “Carxr””; and the Panel notes that the Response is in the name of Alireza Deljou. The Panel also notes that Respondent makes no claims to be commonly known by the disputed domain name and the Response does not allege that it is. The evidence from the WHOIS information, as provided by Complainant, identifies the registrant of the disputed domain name as “carxr.” Despite the fact that the WHOIS may suggest an affiliation between Respondent and the disputed domain name, the Panel nevertheless concludes that Respondent is, prima facie, not commonly known by the disputed domain name under Policy ¶ 4(c)(ii) without other evidence showing that Respondent was commonly known by the disputed domain name prior to its registration. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
All of these matters go to make out the prima facie case against Respondent.
The Panel emphasizes that this is a prima facie finding and that the question now arises whether Respondent has rebutted the prima facie case against it. Here again the Panel must examine the evidence and submissions closely.
As Respondent may not be familiar with the Policy, the Panel will set out here the criteria in the Policy that enables a Respondent to show that it has a right or legitimate interest in a disputed domain name. Policy ¶ 4(c) provides that:
“…Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is to be noted that because the criteria are “without limitation”, a Respondent may rely on factors other than those set out.
It is clear from the evidence that Respondent cannot make out a case under sub-paragraph (i), as it does not claim to be selling goods and services. The Panel has already decided that a case cannot be made out under sub-paragraph (ii) for reasons already given. Rather it is sub-paragraph (iii) on which Respondent relies.
Respondent’s approach to this issue is, therefore, to contend that it is making a legitimate noncommercial and fair use of the disputed domain name under Policy ¶ 4(c) (iii). If that case were made out, Respondent will have rebutted the prima facie case against it, as that conclusion would give Respondent rights and legitimate interests in the disputed domain name under Policy ¶ 4(a) (ii). See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the <missionsuccess.net> domain name where she was using the domain name in connection with a noncommercial purpose); see also Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 17, 2000) (finding a bona fide use of the <stmoritz.com> domain name where it resolved to a website that provided information about the city of St. Moritz, as well as other countries, general news, and net cafes).
The question, therefore, is whether Respondent has shown a “legitimate noncommercial and fair use of the disputed domain” and, indeed, that is the central question in this proceeding. Respondent argues in its Response and Additional Submission, in effect, that its “legitimate noncommercial and fair use of the disputed domain” comes about from using the domain name to resolve to a website which is a “broadcasting website”, i.e. an information site that is used to promote professional people who are active in the field of automotive tuning in Iran and to feature articles on major car manufacturers and their products.
If the website were a purely information or “broadcast” site, Respondent would have a reasonable, although not automatic, case for a finding that the site was a “legitimate noncommercial and fair use of the disputed domain” , just as a fan site or criticism site might well be seen as legitimate, noncommercial and fair.
In support of such a finding, Respondent alleges that its website name is derived from “Reveal X Car” which means revealing the identity of cars and the people who are active in the field of automobiles, research, innovations, and inventions. Respondent states that it has not earned any money from the sale of any products on the website, asserting in both its Response and Additional Submission that any and all products for sale on the website are not actually listed by Respondent, but are posted by its members in the “Bazaar” section of the website. Respondent also argues that its activities are limited only to Iran and only Iranians visit the website, while Complainant’s business activity is limited to the U.S.
Having studied the evidence closely, the Panel has some difficulty with those submissions. It is clear enough that the website is in part an information website, but it is not exclusively so and probably not even substantially so. It has all the signs of carrying an exchange of information, but it also has a substantial commercial content. It carries a large range of advertisements with company logos for businesses clearly engaged in trade in aspects of the automotive industry. Under “Related sites” are groups of companies engaged in fields such as “Tuning companies” and “brakes and clutches”. There are many tuning and other companies listed and the information about them, being highly professional in its presentation, is very commercial. In general, the site is well illustrated with logos, company information and many photographs, enhancing the notion that what is being done on the website is essentially not the exchange of information for aficionados, but fairly straightforward and regular advertising of commercial and competing interests. One company, for example, Sebring, displays its international network under the heading “Sebring worldwide” and invites the viewer to find the company’s overseas locations by means of a world map that includes the United States of America. It is true that there is a “Bazaar” section on the site and it is probably also true that it carries some personal advertisements rather than company advertisements, but when a BMW is described there as “wholesale” it clearly has at least some commercial content. The website also carries advertisements or promotions for the sale of vehicles. Perhaps of more concern to the Panel is that it has a promotion for another and obviously related website , www.carxrshop.com which, on examining it, appears to be a purely commercial site, carrying as it does, many advertisements for parts, with the prices of the parts prominently displayed.
On the whole, it is not correct to say that the site is in substance an information exchange site, as it has far too much commercial content to enable that categorization to be given to it.
With respect to Respondent’s other points, in the opinion of the panel,
(a) it is improbable that the name of the website is derived from “Reveal X Car”, i.e. revealing the identity of cars and the people who are active in the fields specified above; both the name and logo that Respondent has chosen for “carxr” are virtually identical to those previously adopted by Complainant for “carx”, a similarity that probably provides a more likely explanation than that given by Respondent;
(b) it may be true that Respondent has not earned any money from the sale of any products advertised in the “Bazaar” section of the website. But the main sales promotions on the website are not in the “Bazaar” section, but are in the body of the site ; in any event, the reality is that Respondent is using Complainant’s trademark and, in substance, its logo for a site that is actively promoting a broad range of brands of parts, services and vehicles and Complainant does not want its trademark being used for that purpose;
(c) Respondent argues that its activities are limited only to Iran and only Iranians visit the website, while Complainant’s business activity is limited to the U.S. ; that may be true, but the ambit of the internet is universal and Complainant is entitled to be protected from its trademark being used by means of an inappropriate domain name wherever that might occur;
Put in terms of the Policy, the use of Respondent’s domain name, of which sufficient details have now been given, does not constitute a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c) (iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also 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).
Accordingly, the Panel concludes that Respondent has not rebutted the prima facie case against it. Complainant has thus established the second of the three elements that it must make out.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
As Respondent may not be familiar with the Policy, the Panel will set out here the criteria that, if present, will be evidence of registration and use in bad faith. Again, it should be noted that a Complainant may rely on other criteria than those specified. Policy ¶ 4(b) provides as follows:
“For the purposes of Paragraph 4(a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(I) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
The evidence does not support a finding under either of sub-paragraphs (i) or (ii), so Complainant will have to make out its case under sub-paragraphs (iii) or (iv) or rely on other factors coming within the generally accepted meaning of “bad faith” although not specified in the Policy.
Complainant relies, first, on sub-paragraph (iii) and asserts that Respondent’s disputed domain name disrupts its business, demonstrating bad faith registration and use. Complainant states in both its Complaint and Additional Submission that the domain name resolves to a website that promotes the same goods and services as Complainant and in particular automotive services and that it advertises the trademarks of others and offers vehicles and parts for sale.
Complainant then relies on Policy ¶ 4(b)(iv). In support, Complainant claims that Respondent generates revenue through its third-party advertising on the website. Complainant also states that Respondent prominently displays a logo on the website that is nearly identical to Complainant’s logo and that this use of the logo, along with the similar automotive-related content, creates confusion among consumers about Respondent’s affiliation with Complainant. Complainant claims that Respondent’s use of this logo and the automotive-related content on the resolving website is strong evidence that the disputed domain name was intentionally registered misleadingly to divert consumers and/or tarnish the CARX mark. In its Additional Submission, Complainant reasserts that public confusion between Complainant and Respondent is likely because, despite whatever minor differences exist in the services offered by both parties, there is still substantial overlap in Complainant’s and Respondent’s businesses. Complainant also contends in its Additional Submission Respondent’s different geographical location in Iran does not prevent confusion because Respondent’s resolving website is still accessible from the U.S. and offers products that can be purchased by consumers in the U.S.
Complainant also argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the CARX mark. Complainant states that Respondent's offering of the same goods and services as Complainant and links to others in the same industry, along with the use of a nearly identical trademark, indicates that Respondent had actual knowledge of Complainant's mark and rights. Complainant submits multiple printouts indicating that a logo was used on Respondent’s website that very closely mimics its own logo.
Respondent’s case is, in essence, that it has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
Respondent claims that no Internet users seeking out Complainant have actually been diverted to its website, resulting in no actual disruption to Complainant’s business. Respondent submits multiple web-traffic analytic reports regarding who utilizes its website and where they are from. Respondent claims that the analysis indicates that the users of its website are primarily Iranian and are driven to the website when they search the term “carxr.” Respondent asserts that this fact indicates a lack of general disruption because the users of its website are not those seeking out Complainant. Respondent also argues in both its Response and Additional Submission that it is a broadcasting website and does not sell automotive products. Respondent alleges that it does not operate in the same sphere of business as Complainant and, as a result, it is not disrupting Complainant’s business. Respondent states that because of its relative geographic distance, it would be difficult to categorize it as a competitor of Complainant, as it could not steal Complainant’s customers even if it wanted to.
The Panel has given careful attention to the website and has considered the evidence and all of the submissions. Having done so the Panel finds that the case clearly comes within Policy ¶ 4(b)(iv) and also within the generally accepted meaning of bad faith. The Panel therefore finds that the domain name was registered and has been used in bad faith. As such, it is not necessary for the Panel to make a specific finding on whether the case also comes within Policy ¶ 4(b)(iii). Before giving specific reasons for this conclusion, the Panel makes two other important points.
First, the Panel is satisfied that although the activities of the parties are not identical, they are substantially the same, at least in terms of the industry in which they work and the functions they perform.
Secondly, it should also be noted that Respondent has virtually admitted that it misappropriated Complainant’s logo which is close to admitting that it also misappropriated Complainant’s trademark to incorporate it in the disputed domain name. It does this by saying in its Response that using Complainant’s logo was a “big mistake” and due only to its inexperience and the lack of a copyright law in Iran. In any event, the Panel finds that Respondent’s logo is a copy of Complainant’s trademark. Given that it is unlikely that such an act could be committed by accident, it must be concluded that it was done intentionally.
Those two matters colour the Panel’s conclusions on the specific findings that it has made.
The Panel finds that Respondent registered and is using the disputed domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b) (iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
In particular, it is difficult to accept and the Panel does not accept, that Respondent has gone through the time and trouble of establishing the website and arranged for so much commercial content on the site without an intention to attract commercial gain by one means or another. Clearly, Respondent’s intention has been to attract internet users to the site and other sites to which it is linked. It has also done this by using Complainant’s trademark and, as it has admitted, Complainant’s logo. By doing so it has inevitably created confusion with Complainant’s mark as to whether the site and what is being promoted on it and on the sites of advertisers linked to it are sponsored by, affiliated with or endorsed by Complainant. Any reasonable person faced with the two sites would, in the opinion of the Panel, conclude that there was some relationship between Complainant and Respondent and would be confused. In any event, it is not necessary to show actual confusion, for all that Policy ¶ 4(b)(iv) requires to be shown is “a likelihood of confusion” and that has undoubtedly been created by using Complainant’s trademark in the domain name, misappropriating its logo and using the domain name to set up a website that promotes the same goods and services as Complainant and, in particular automotive services, as well as advertising the trademarks of others and offering vehicles and parts for sale. The case therefore comes squarely within Policy ¶ 4(b)(iv) and the Panel finds on that basis that the disputed domain name was registered and used in bad faith.
It is probably inherent in what the Panel has already said, but it also finds that
Respondent had actual knowledge of Complainant's mark and rights and determines that Respondent registered the disputed domain name in bad faith on that basis.
In addition and having regard to the totality of the evidence and the submissions of Complainant, the Panel finds that, in view of Respondent’s registration of the domain name using the CARX mark and in view of the conduct that Respondent engaged in by using the domain name and its logo, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus established the third of the three elements that it must make out.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carxr.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 26, 2012
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