Showcase Publications, Inc. d/b/a Auto
Shopper v. Autoshopper Internet Services, Inc.
Claim
Number: FA0412000390967
Complainant is Showcase Publication, Inc. d/b/a Auto Shopper (“Complainant”), represented by Kurt E. Anderson, of Giordano, Halleran & Ciesla, P.C., 125 Half Mile Road, Red Bank, NJ
07701. Respondent is Autoshopper Internet Services, Inc. (“Respondent”),
#432-5525 West Boulevard, Vancouver, BC V6M3W6 Canada.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <autoshopper.com>, registered with The
Registry At Info Avenue d/b/a IA Registry.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on December
23, 2004; the National Arbitration Forum received a hard copy of the Complaint
on December 27, 2004.
On
December 23, 2004, The Registry At Info Avenue d/b/a IA Registry confirmed by
e-mail to the National Arbitration Forum that the domain name <autoshopper.com>
is registered with The Registry At Info Avenue d/b/a IA Registry and that
Respondent is the current registrant of the name. The Registry At Info Avenue
d/b/a IA Registry has verified that Respondent is bound by the The Registry At
Info Avenue d/b/a IA Registry 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
December 30, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of January 19, 2005 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@autoshopper.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
January 27, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Carmody, Esq., 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 <autoshopper.com>
domain name is identical to Complainant’s AUTO SHOPPER mark.
2. Respondent does not have any rights or
legitimate interests in the <autoshopper.com> domain name.
3. Respondent registered and used the <autoshopper.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Showcase Publications, Inc., d/b/a Auto Shopper, holds trademark registration
rights for the AUTO SHOPPER mark with the United States Patent and Trademark
Office (Reg. No. 1,544,385, issued June 20, 1989). Complainant uses the AUTO SHOPPER mark in connection with a
website located at the <showauto.com> and <autoshopperonline.com>
domain names and newspaper periodicals, each of which advertises new and used
automobiles, trucks and motorcycles.
Complainant first began using the AUTO SHOPPER mark in 1978 and has
continuously used the mark in commerce since that time.
Respondent
registered the <autoshopper.com> domain name on October 25,
2000. Respondent is holding the domain
name for lease to others. Respondent
has leased the disputed domain name to Autobytel, Inc. who then authorized its
subsidiary, Stone Age, Inc. to assume the domain name lease from Autobytel.
Upon receipt of
a cease and desist letter from Complainant, Respondent’s lessee disabled the
active website and discontinued use of the <autoshopper.com>
domain name. However, after receiving
notice of the present proceedings, Respondent’s lessee revived the website
under the guise of a subsidiary company, adopted the old format and style of
the website and continued to conduct the website as it formerly did.
Respondent’s
lessees are engaged in the same advertising and sale of automobiles services as
Complainant. Internet users are
redirected from the disputed domain name to a website where they are prompted
to enter the make and model of a vehicle of their choice in addition to their
contact information. Internet users are
then contacted by Respondent’s lessees and are referred to a website located at
the <car.com> domain name, which is maintained by Respondent’s lessees.
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.
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.
Complainant has
established that it has rights in the AUTO SHOPPER mark through registration
with the United States Patent and Trademark Office and by continuous use of the
mark in commerce for the last 26 years.
See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption
that they are inherently distinctive and have acquired secondary meaning.”); see
also Janus Int’l Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that 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.
Respondent has the burden of refuting this assumption.).
The domain name
registered by Respondent is identical to Complainant’s AUTO SHOPPER mark
because the only difference between the two is the addition of the generic
top-level domain “.com” and the omission of a space between the words “auto”
and “shopper.” These two minor
differences are insufficient to distinguish the <autoshopper.com> domain
name from Complainant’s mark. See Croatia Airlines v. Kijong, AF-0302
(eResolution Sept. 25, 2000) (finding
that the domain name <croatiaairlines.com> is identical to Complainant's
CROATIA AIRLINES trademark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to Complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Victoria's Secret v. Hardin,
FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the
<bodybyvictoria.com> domain name is identical to Complainant’s BODY BY
VICTORIA mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(i).
Complainant
asserts that Respondent has no rights or legitimate interests in the <autoshopper.com>
domain name. The burden shifts to
Respondent to show that it does have rights or legitimate interests once
Complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb.
Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent
has no rights or legitimate interests with respect to the domain name it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that under certain circumstances the mere
assertion by Complainant that Respondent has no rights or legitimate interests
sufficient to shift the burden of proof to Respondent to demonstrate that such
a right or legitimate interest does exist); see also Geocities v. Geociites.com, D2000-0326
(WIPO June 19, 2000) (finding that Respondent has no rights or legitimate
interests in the domain name because Respondent never submitted a response or
provided the Panel with evidence to suggest otherwise).
Moreover, the
Panel may accept all reasonable allegations and inferences in the Complaint as
true because Respondent has not submitted a Response. See 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.”); see
also Vertical Solutions Mgmt., Inc. v. webnet-marketing, Inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond
allows all reasonable inferences of fact in the allegations of the Complaint to
be deemed true).
Respondent is
using the <autoshopper.com> domain name to redirect Internet users
to a competing website that features car-related services similar to those
offered by Complainant. Respondent’s
use of a domain name that is identical to Complainant’s AUTO SHOPPER mark to
redirect Internet users interested in Complainant’s services to a commercial website
that offers competing car-related services is not a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is
not a legitimate noncommercial or fair use of the disputed domain name pursuant
to Policy ¶ 4(c)(iii). See eBay Inc.
v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use
of complainant’s entire mark in infringing domain names makes it difficult to
infer a legitimate use"); see also Avery Dennison Corp. v. Steele,
FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights
or legitimate interests in the disputed domain name where it used Complainant’s
mark, without authorization, to attract Internet users to its business, which
competed with Complainant).
Additionally, upon receiving Complainant’s cease and desist
notification, Respondent discontinued use of the disputed domain name, but
later revived the domain name under the guise of a lease to a subsidiary
company. Respondent continued to
operate the domain as a portal to attract Internet users to a competing website
offering similar car-related services.
Respondent’s knowing use of a domain name identical to Complainant’s
AUTO SHOPPER mark for commercial gain demonstrates lack of rights and
legitimate interests in the <autoshopper.com> domain name. See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb.
Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to
suck surfers into a site sponsored by Respondent hardly seems legitimate”); see
also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat.
Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of
Complainant, had no rights or legitimate interests in a domain name that
utilized Complainant’s mark for its competing website); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark).
Furthermore,
nothing in the record, including the WHOIS information, suggests that
Respondent is commonly known by the <autoshopper.com> domain name
or by Complainant’s AUTO SHOPPER mark, pursuant to Policy ¶ 4(c)(ii). In fact, there is no domain name under which
Respondent openly conducts its business in a manner that can be associated with
its corporate name. Further, searches
using many different search engines show that Respondent is not associated with
any domain name, other than, <vancouverautoparts.com>. See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that Respondent does not have rights in a domain name when
Respondent is not known by the mark).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(ii).
Respondent is
using the <autoshopper.com> domain name to redirect Internet users
to a competing web page that is operated under the guise of a lease agreement
to Respondent’s subsidiary company that offers similar car-related
services. The Panel finds that by
creating confusion around Complainant’s mark, Respondent is attempting to
disrupt the business of a competitor.
Respondent’s use of Complainant’s mark to offer competing services evidences
Respondent’s bad faith registration and use pursuant to Policy ¶
4(b)(iii). See S. Exposure v.
S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000)
(finding bad faith where Respondent, a company financially linked to
Complainant’s main competitor, registered and used the domain name in question
to disrupt Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
Respondent has diverted business from Complainant to a competitor’s website in
violation of Policy ¶ 4(b)(iii)).
Respondent’s
continued use of the disputed domain name to redirect unsuspecting Internet
users to its commercial websites demonstrates Respondent’s intentional attempt
to create Internet user confusion for commercial gain pursuant to Policy ¶
4(b)(iv). See Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or is sponsoring the services offered at the
site); see also Luck's Music
Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000)
(finding that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract, for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks); see also Reuters
Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad
faith where Respondent attracted users to a website sponsored by Respondent and
created confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
The Panel finds
that Complainant fulfilled Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <autoshopper.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
February 10, 2005
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