CarMax Business Services, LLC v. N.A. c/o Domain Administrator
Claim Number: FA0701000904012
Complainant is CarMax Business Services, LLC (“Complainant”), represented by Dean A. Scharnhorst, of Williams Mullen, P.C., 222 Central Park Avenue, Suite 1700, Virginia Beach, VA 23462. Respondent is N.A. c/o Domain Administrator (“Respondent”), PO Box 588, West Bay WB, KY.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <carmaxworld.com>, registered with Vibrant Networks, 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.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on January 29, 2007.
On January 30, 2007, Vibrant Networks, Inc confirmed by e-mail to the National Arbitration Forum that the <carmaxworld.com> domain name is registered with Vibrant Networks, Inc and that Respondent is the current registrant of the name. Vibrant Networks, Inc has verified that Respondent is bound by the Vibrant Networks, 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 February 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 26, 2007 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@carmaxworld.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 5, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 <carmaxworld.com> domain name is confusingly similar to Complainant’s CARMAX mark.
2. Respondent does not have any rights or legitimate interests in the <carmaxworld.com> domain name.
3. Respondent registered and used the <carmaxworld.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CarMax Business Services, LLC, is a subsidiary
of Carmax, Inc., one of the largest used car retailers in the
Complainant has registered the CARMAX mark with the United States Patent and Trademark Office (“USPTO”) (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).
Respondent’s <carmaxworld.com> domain name, which it registered on December 20, 2006, resolves to a commercial web directory with links to various third-party websites, some of which sell used cars in direct competition with 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."
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 valid trademark registrations sufficiently
demonstrate its rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007)
(finding that a trademark registration adequately demonstrates a complainant’s
rights in a mark under Policy ¶ 4(a)(i)); see also
Respondent has merely added the term “world” to Complainant’s CARMAX mark in the <carmaxworld.com> domain name. The attachment of a common term such as “world” to a registered mark in a domain name is not a distinguishing difference. Consequently, the Panel finds the domain name at issue to be confusingly similar to the mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)).
Moreover, the addition of the generic top-level domain
“.com” is without relevance to a Policy ¶ 4(a)(i) analysis, as it is merely a
functional element required of all domain name registrations. See Rollerblade, Inc. v. McCrady,
D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name
such as “.net” or “.com” does not affect the domain name for the purpose of
determining whether it is identical or confusingly similar); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO
Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD)
name ‘.com’ is . . . without legal significance since use
of a gTLD is required of domain name registrants . . . .").
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and
legitimate interests in the contested 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 Swedish Match UK Ltd. v. Admin,
Domain, FA 873137 (Nat. Arb. Forum
Feb. 13, 2007) (finding that once a prima facie case has been established
by the complainant under Policy ¶ 4(c), the burden then shifts to the
respondent to demonstrate its rights or legitimate interests in the disputed
domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat.
Arb. Forum Feb. 26, 2007) (finding that Policy ¶ 4(a)(ii) requires that the
complainant must show that the respondent has no rights to or legitimate
interests in the subject domain name and that once the complainant makes this
showing, the burden of production shifts to the respondent to rebut the
complainant’s allegations).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the domain
name at issue. See Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure
to respond can be construed as an admission that they have no legitimate
interest in the domain names); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000)
(finding that the respondent has no rights or legitimate interests in the
domain name because the respondent never submitted a response or provided the
panel with evidence to suggest otherwise).
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 “N.A. c/o Domain Administrator,” and there is no
other evidence in the record suggesting that Respondent is commonly known by
the <carmaxworld.com> domain name. Complainant also alleges that it has not
given Complainant authorization to use the CARMAX mark in a domain name. As a result, the Panel concludes that
Respondent has not established rights or legitimate interests in the <carmaxworld.com> domain name pursuant to Policy ¶ 4(c)(ii). See The Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not
commonly known by the disputed domain names where the WHOIS information, as
well as all other information in the record, gave no indication that the
respondent was commonly known by the disputed domain names, and the complainant
had not authorized the respondent to register a domain name containing its
registered mark); see also 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, Respondent is using the <carmaxworld.com> domain name to redirect Internet users seeking information on
Complainant’s automobile services to a commercial web directory displaying
links to competing companies. In Expedia,
Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005), the panel found
the respondent’s use of a confusingly similar domain name to divert consumers
to other travel websites that competed with the complainant was not a use in
connection with 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). Because Respondent is using
the disputed domain name in a similar fashion and likely profiting from its
diversion of Internet users to competing websites, the Panel concludes that
Respondent does not have rights or legitimate interests in the <carmaxworld.com> domain name
pursuant to Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of
Choice Holding Co., FA 621292 (Nat.
Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names
confusingly similar to the complainant’s WAL-MART mark to divert Internet users
seeking the complainant’s goods and services to websites competing with the
complainant did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶
4(c)(iii)).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is utilizing a domain name confusingly similar to
Complainant’s CARMAX mark to operate a commercial web directory featuring links
to other used and new car companies providing competing services. The Panel finds such use to indicate bad
faith according to Policy ¶ 4(b)(iii), for it appears that Respondent has
registered and is using the <carmaxworld.com> domain name for the
primary purpose of disrupting Complainant’s business. See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii)); see
also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors).
Respondent is using the domain name at issue, which is confusingly similar to Complainant’s CARMAX mark, to redirect Internet users seeking Complainant’s used and new car products and services to a commercial web directory featuring links to Complainant’s direct competitors and to unrelated content. The Panel infers that Respondent earns click-through fees for each consumer it diverts to these third-party websites. Therefore, Respondent is taking advantage of the confusing similarity between Respondent’s domain name and Complainant’s CARMAX mark, and profiting from the goodwill associated with the mark. Use of the disputed domain name for this purpose suggests bad faith registration and use under 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
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 <carmaxworld.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: March 13, 2007
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