Carfax, Inc. v. Mark Hannifin
Claim Number: FA1211001469690
Complainant is Carfax, Inc. (“Complainant”), represented by Keith Barritt of Fish & Richardson P.C., Washington, D.C. Respondent is Mark Hannifin (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carfacx.com>, registered with Godaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 2, 2012; the National Arbitration Forum received payment on November 5, 2012.
On Nov 05, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <carfacx.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 November 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 26, 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@carfacx.com. Also on November 6, 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 November 19, 2012.
On December 3, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Respondent submitted what it termed an “Addendum” its Response. This Additional Submission was submitted on December 3, and was found by the Forum to be deficient under Supplemental Rule 7, but nevertheless the Panel in its discretion and pursuant to the Rules, considered the submission.
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. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is the leading source of vehicle history information for buyers and sellers of used cars.
Complainant owns multiple United States Patent and Trademark Office (“USPTO”) registrations for its CARFAX and related trademarks in connection with a wide variety of services associated with the car buying experience.
Complainant’s rights in the CARFAX trademark date back to 1984, approximately 28 years before Respondent registered the disputed domain name on July 14, 2012.
Respondent registered and has been using the <carfacx.com> domain name to capitalize on the considerable goodwill associated with the CARFAX trademark and trade name.
The disputed domain name resolves to a website prominently displaying the name CARFACX and explaining that Respondent is launching a mobile application that will be used in connection with providing information about automobiles and related services. Such a service is identical to that provided by Complainant.
The disputed domain name constitutes a typo of the CARFAX mark and Complainant’s official domain name, <carfax.com>. Respondent’s disputed domain name differs by only the additional letter “c” from the CARFAX trademark and trade name and <carfax.com> website, which makes the disputed domain name confusingly similar to Complainant’s CARFAX mark.
The sole reason Respondent registered and is using the disputed domain name is to put money in Respondent’s pockets at the expense of Complainant. Respondent’s actions have caused and will continue to cause significant harm to Complainant’s business and to Internet users wanting to purchase Complainant’s services.
Respondent is not legitimately or commonly known as “Carfacx” and has never been authorized by Complainant to use the CARFAX mark. It was only after Complainant contacted Respondent about its use of the disputed domain name that Respondent registered the business name “Carfacx Mobile App Inc” with the State of Florida.
Complainant has never approved any service purportedly offered by Complainant. Respondent’s use of confusingly similar domain name to direct Internet users to a resolving website offering services highly similar for its own profit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent’s use of the disputed domain name to advertise automobile-related information services that compete with Complainant’s product constitutes disruption and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
The unique combination of the terms “car” and “fax” (or “facx”) is not a “common,” generic or descriptive phrase subject to third-party use.
There can be no question that Respondent was well aware of Complainant’s CARFAX mark at the time Respondent registered the disputed domain name due to the time, money and effort Complainant has invested in promoting its mark. At a minimum, Respondent had constructive knowledge due to Complainant’s many federal trademark registrations.
B. Respondent
Respondent contends as follows:
Respondent has been developing over the last two years a series of intellectual properties that are now ready for distribution. Carfacx Mobile APP Inc. is a Florida corporation established in October 2012 that will now be seeking Patent pending applications with regards to the intellectual properties.
The length of time a company and its product have been around does not fail to establish that it has rights or legitimate interests in respect of the disputed domain name.
The disputed domain name represents the company Carfacx Mobile APP Inc. Complainant does not hold any trademarks with regards to any domains, spelling, misspelling or variants thereof with regards to the word or phrase “CARFACTS.” The <carfacx.com> domain name is a spelling, misspelling or variant of the word or phrase “CARFACTS.”
Complainant secured the <carfacts.com> domain name on June 20, 1997 and decided not to use that domain as its primary domain or trademark and secured the <carfax.com> domain name on July 30, 1997. Complainant felt the domain “carfacts.com” and/or the mark “Carfacts,” including any spelling, misspelling or variant thereof were not similar enough to find a likelihood of confusion or to properly identify the company.
Complainant’s statement that “Respondent is launching a mobile application that will be used in connection with providing information about automobiles and related services (e.g., where automobile dealerships may advertise their current inventory of automobiles available for sale or where mechanics may advertise their repair and maintenance services)” is incorrect. Respondent will not be advertising dealership current inventory or repair or maintenance services.
Complainant is filing the Complaint in an effort to “fish” for information regarding the intellectual property of Respondent. Respondent’s products distributed through the disputed domain name are free to the consumer and will be marketed with the help of dining and entertainment venues as displayed on the website at the <carfacx.com> domain name. These marketing channels are different from those channels of Complainant.
Complainant has not demonstrated any evidence of Respondent’s intent in selecting the disputed domain name. Respondent chose the disputed domain name after the AAA CARFACTS trademark was approved without Complainant filing a letter of protest or any claims regarding trademark infringement.
Complainant has not demonstrated any evidence of actual confusion. It should also be noted that Complainant has not had a ruling in its favor since January 3, 2012 when the American Automobile Association had the trademark “AAA CARFACTS” become a registered trademark and the defendant could present the court with evidence of an unlawful double standard and/or Naked Licensing or Failure to Police regarding the enforcement of trademark infringement laws with regards to a spelling, misspelling or variant of the word or phrase “Carfacts.”
Complainant is asking the National Arbitration Forum to enforce trademark infringement laws regarding the word or phrase “CARFAX” against Respondent. In doing so, Complainant is now demonstrating an unlawful double standard and/or Naked Licensing or Failure to Police regarding the enforcement of trademark infringement laws with regards to a spelling, misspelling or a variant of the word or phrase “Carfacts.”
The basis for the unlawful double standard and/or Naked Licensing or Failure to Police claim is supported by the fact that, from the time the American Automobile Association filed for the trademark AAA CARFACTS until the mark became a registered trademark; Complainant never filed a letter of protest contesting the application.
Complainant owns USPTO registered trademarks for CARFAX.
Respondent registered the at-issue domain name subsequent to the time Complainant acquired rights in the CARFAX mark.
Complainant has not authorized Respondent to use its CARFAX mark.
The at-issue domain name references a website which relates to a proposed mobile application called CarFacX which concerns automobile information. The intended use of the domain name is commercial in nature.
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 at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant owns several trademark registrations with the USPTO for the CARFAX mark. Respondent argues that since he believes Complainant has not endeavored to enforce its trademark rights in the CARFAX mark (a dubious contention at best) that Complainant somehow has impliedly waived its right to bring and/or prevail in the instant proceeding. However, even if “waiver” might be a relevant claim with regard to an infringement action brought in a court of competent jurisdiction under the Lanham Act or otherwise, this UDRP proceeding is neither designed, nor equipped, nor required to consider the minutia of trademark law that might relevant in a formal litigation. Rather, the Panel is concerned only with the narrow charge of a UDRP proceeding to determine whether or not Complainant has proven each of the three specific UDRP factors set out in Policy ¶4(a) and to render its decision accordingly. In that regard, Complainant’s registration of the CARFAX with USPTO mark acts conclusively to establish Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”)
Respondent’s domain name is confusingly similar in sight, and identical in sound, to Complainant trademark. Respondent’s <carfacx.com> domain name consists of the CARFAX name and trademark, with the insertion of the letter “c” and appended top-level domain, “.com.” When spoken the Complainant’s mark and the Respondent second level domain name sound identical. Additionally, It is well settled that the appending of the “.com” top level domain name to an at-issue second level domain name is irrelevant to the Panel’s Policy ¶4(a)(i) analysis. Since the slight differences between the at-issue domain name and Complainant’s mark does not distinguish one from the other, the Panel concludes that the <carfacx.com> domain name is confusingly similar to Complainant’s CARFAX mark under Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Absent persuasive evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively. Complainant makes out a prima facie case. Complainant indicates that it has never authorized Respondent to use its trademark in a domain name and Respondent offers no evidence of having any rights in CARFACX or CARFAX which might be superior to those of Complainant. The Panel also finds that there are no Paragraph 4(c) circumstances which, notwithstanding Complainant’s prima facie showing discussed above, might otherwise demonstrate that Respondent has rights or interests in the at-issue domain name.
First, paragraph 4(c)(ii) of the Policy is inapplicable since Respondent is not commonly known by the <carfacx.com> domain name. WHOIS information for the at-issue domain name reveals that the domain name’s registrant is “Mark Hannifin.” Respondent Mark Hannifin offers no evidence tending to prove that he is otherwise commonly known by the <carfacx.com> domain name. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). Additionally, the undisputed fact that the <carfacx.com> homepage is titled CARFACX is irrelevant concerning whether or not Respondent is commonly known by the domain name, as is the fact that Respondent may have registered CARFACX as a business/corporate name subsequent to being notified of the instant dispute. See, Accu-Sort Sys., Inc. v. Accu-Sort.inc, FA 164568 (Nat. Arb. Forum Aug. 8, 2003) (“Respondent’s self-serving method of naming itself ‘Accu-Sort.inc’ is insufficient to support a finding that Respondent was ‘commonly known by’ the <accu-sort.com> domain name prior to its registration of the disputed domain name.”).
Second, paragraphs 4(c)(i) and 4(c)(ii) are also inapplicable. Respondent claims that he is using the domain name in furtherance of a future business related to a loosely defined mobile app[lication] designed to render information about automobiles. The <carfacx.com> domain name resolves to a website prominently displaying the name “Carfacx.” The homepage goes on to explain that Respondent is launching a mobile app[lication] that will be used in connection with providing information about automobiles and related services. Respondent’s inchoate services appear similar in scope to those currently offered by Complainant making the parties competitors. Given the similarity of the domain name and Complainant’s trademark, and as discussed below Respondent’s prior knowledge of Complainant and its trademark, the Panel concludes that Respondent uses the at-issue domain name to divert Internet users in search of Complainant’s automobile information services to Respondent’s website and thereby capitalize on the goodwill associated with the CARFAX mark. The Panel further notes that Respondent’s proposed use of the domain name appears to be baseless. Respondent proffers no evidence which corroborates the contentions made on the <carfacx.com> homepage, but instead comments on trademark disputes between Complainant and third parties which are fundamentally irrelevant to the instant proceeding. The glaring absence of evidence supporting Respondent’s future business claims, evidence such as: a business plan, invoices concerning start-up expense, prototype computer code in furtherance of the proposed “mobile app,” or sworn affidavits regarding the business, supports Complainant’s suggestion that Respondent intends to use the confusingly similar domain name to capitalize on Complainant’s trademark. However, even if Respondent does intend to pursue a mobile app[lication] business identified as CARFACX, calling the business CARFACX would unavoidably trade on Complainant’s well know and identically sounding CARFAX mark. Therefore, the Panel concludes that Respondent use of the at-issue domain name under the instant circumstances is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also, Carfax, Inc. d/b/a Carfax v. Charlie Keller, D2001-0922 (WIPO Sept. 14, 2001) (“Whilst Respondent may be offering goods or services legitimately, and may be using the disputed Domain Name, the first does not legitimize the second if the Respondent had no right to adopt the disputed Domain Name.”).
Given the forgoing, Complainant satisfies its initial burden and absent evidence to the contrary conclusively demonstrates that Respondent lacks both rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, a Policy ¶4(b) bad faith circumstance is present and there is non-Policy ¶4(b) evidence from which the Panel may likewise conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent registered a domain name that is identically sounding and confusingly similar to Complainant’s CARFAX mark. The at-issue domain name references a website that announces Respondent’s future automobile information-related services; services which are comparable to the services offered by Complainant. Given the similarity of the parties’ respective markets the parties are shown to be competitors in the field of automobile information. Respondent’s use of the at-issue domain name under these circumstances disrupts Complainant’s business and is evidence of bad faith registration and use according to Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Finally, Respondent was undoubtedly aware of Complainant’s CARFAX mark when he registered the <carfacx.com> domain name. Complainant and its CARFAX trademark are well known in the field of information pertaining to automobiles; Respondent claims to be involved in a similar area of commerce. Thus, it is almost inconceivable that Respondent would not have been aware of Complainant prior to registering <carfacx.com>. Even more significantly, Respondent explains in his Response that he selected the at-issue domain name after realizing that a third party’s trademark, colorably similar to CARFAX, was approved without Complainant filing a letter of protest or making any claims regarding trademark infringement. Since Complainant would have had no basis whatsoever to challenge an infringing mark without first having trademark rights of its own, Respondent’s assertion impliedly admits that he knew of Complainant and its rights in the CARFAX trademark prior to registering the <carfacx.com> domain name. Registering a domain name with prior knowledge of another rights therein indicates bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant’s magazine covers an industry towards which Respondent’s services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carfacx.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 4, 2012
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