Carmax Business Services, LLC v. ZJ
Claim Number: FA0609000802337
Complainants are Carmax Business Services, LLC (collectively, “Complainant”), represented by William R. Poynter, of Williams Mullen, P.C., 222 Central Park Avenue, Suite 1700, Virginia Beach, VA 23462. Respondent is ZJ (“Respondent”), Zhangyang 1661-2304, Shanghai 200001 CN.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <carmaxauction.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 21, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 22, 2006.
On September 21, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the <carmaxauction.com> domain name is registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 27, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 17, 2006 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@carmaxauction.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 24, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <carmaxauction.com> domain name is confusingly similar to Complainant’s CARMAXAUCTIONS.COM mark.
2. Respondent does not have any rights or legitimate interests in the <carmaxauction.com> domain name.
3. Respondent registered and used the <carmaxauction.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CarMax, Inc., is one of the largest retailers of used cars in the United States. At each of its seventy-one used-car superstores under the CARMAX mark, Complainant sells and leases new and used automobiles, offers repair, maintenance and warranty services, and provides automobile-related goods and services. Complainant has continuously used the CARMAX mark in connection with these activities since 1993.
Complainant, Carmax Business Services, LLC, is the owner of CarMax’s intellectual property. Complainant holds trademark registrations for the following marks with the United States Patent and Trademark Office (“USPTO”): CARMAX (Reg. No. 1,941,353 issued December 12, 1995; Reg. No. 1,947,856 issued January 16, 1996; Reg. No. 2,032,449 issued January 21, 1997), CARMAX AUCTIONS (Reg. No. 2,323,178 issued February 29, 2000), CARMAX.COM (Reg. No. 2,922,919 issued February 1, 2005) and CARMAXAUCTIONS.COM (Reg. No. 2,858,025 issued June 29, 2004).
The Panel will hereinafter refer to both parties collectively as “Complainant.”
Respondent registered the <carmaxauction.com> domain name on November 27, 2005. Respondent is using the disputed domain name to maintain a web page with commercial links to Complainant’s competitors in the automobile industry, including websites at the <drivetime.com> and <autoextra.com> domain names. Respondent’s web page also features links to unrelated websites.
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.
Complainant’s CARMAXAUCTIONS.COM mark is registered with the USPTO. Therefore, the Panel holds that Complainant has established rights in the mark for purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also 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).
Respondent’s <carmaxauction.com> domain name contains Complainant’s entire registered CARMAXAUCTIONS.COM mark except for the letter “s.” In Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004), the panel found that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s.” Similarly, in Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), the panel found several domain names that differed from the complainant’s REUTERS mark by one letter were confusingly similar to the mark. Because Respondent’s domain name also only differs from Complainant’s mark by one letter, the Panel concludes that Respondent’s <carmaxauction.com> domain name is not distinguishable from Complainant’s CARMAXAUCTIONS.COM mark and the disputed domain name is therefore confusingly similar to the mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant claims that Respondent lacks rights and
legitimate interests in the <carmaxauction.com> domain name. Complainant must first make a prima facie
case in support of its allegations, and then the burden shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). See 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.”); see also Hanna-Barbera Productions, 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <carmaxauction.com>
domain name. See Am. Online, Inc. v.
AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate
interests where the respondent fails to respond); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the domain name under the name “ZJ,”
and there is no other evidence in the record to indicate that Respondent is
commonly known by the <carmaxauction.com> domain name. Thus, Respondent has not established rights
or legitimate interests in the <carmaxauction.com> domain name
pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not
have rights in a domain name when the respondent is not known by the mark); see
also Instron Corp. v. Kaner, FA 768859 (Sept. 21, 2006) (finding
that the respondent was not commonly known by the <shoredurometer.com>
and <shoredurometer.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 name and there was no other evidence in the
record to suggest that the respondent was commonly known by the domain names in
dispute).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
By registering a domain name confusingly similar to
Complainant’s CARMAXAUCTIONS.COM mark and using it to operate a website
displaying links to Complainant’s competitors, Respondent has registered the
contested domain name for the purpose of disrupting Complainant’s
business. The Panel finds such use of
the disputed domain name constitutes 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 the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business); see
also Puckett, Individually v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has
diverted business from the complainant to a competitor’s website in violation
of Policy ¶ 4(b)(iii)).
Moreover, the Panel infers that Respondent earns referral fees for each Internet users it diverts to other websites via its commercial web page. The Panel thus finds that Respondent taking advantage of the confusing similarity between the disputed domain name and Complainant’s CARMAXAUCTIONS.COM mark in order to profit from the goodwill associated with the mark, which suggests bad faith registration and use according to Policy ¶ 4(b)(iv). See BPI Comm’cns, Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002) (“Complainants are in the music and entertainment business. The links associated with <billboard.tv> and <boogie.tv> appear to be in competition for the same Internet users, which Complainants are trying to attract with the <billboard.com> web site. There is clearly a likelihood of confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship, affiliation, or endorsement of the web site or of a product or service on the web site.”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel concludes that Complainant has satisfied 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 <carmaxauction.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: November 7, 2006
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