WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

TPI Holdings, Inc. v. Galyna O'Kelley and HostMonster.com Inc.

Case No. D2009-1151

1. The Parties

Complainant is TPI Holdings, Inc. of Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC, United States.

Respondents are Galyna O'Kelley of Pensacola, Florida, United States and HostMonster.com Inc. of Provo, Utah, United States.

2. The Domain Name and Registrar

The disputed domain name <autostrader.org> (the “Domain Name”) is registered with FastDomain, Inc., which appears to be the same company (under another name) as one of the Respondents, HostMonster.com Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2009. On August 28, 2009, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the Domain Name. On that same date, FastDomain, Inc. responded with two emails to the Center as follows: (i) a verification response disclosing registrant and contact information for the Domain Name (i.e., specifying the name Galyna O'Kelley) which differed from the named Respondent and contact information in the Complaint, and (ii) a message indicating, in response to a query about whether the Domain Name's registration had lapsed, that “[w]e have renewed the domain at our expense” and that “[t]he party that is determined to be the owner at the end of the Arbitration will be responsible for the cost of the domain renewal ($10 USD).”

The Center sent an email communication to Complainant on September 1, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 4, 2009, naming both HostMonster.com Inc. and Galyna O'Kelley as Respondents. The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on September 8, 2009. On September 14, 2009, Complainant requested a one-month suspension while the parties attempted to reach a voluntary settlement. The Center suspended the proceedings on September 16, 2009; however, on October 13, 2009, Complainant requested that the proceedings be reinstituted following unsuccessful efforts at settlement. In accordance with the Rules, paragraph 5(a), the due date for Response after the reinstitution of the proceeding was October 27, 2009. Respondent did not submit a response on this date or thereafter and, accordingly, the Center notified Respondent's default on October 28, 2009.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on November 2, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

The Panel observes that, in view of the Registrar's statement that it had paid the renewal fee for the Domain Name at a time when it might otherwise have lapsed, there is uncertainty about which of the two Respondents is currently the registered holder of the Domain Name. The Panelist is satisfied that, as between the two Respondents named in this case who have been provided with proper notice of all communications, one of them is the registered holder of the Domain Name. In view of the decision of the Panel in paragraph 7 below, the order of the Panel is effective as to both Respondents and the Registrar of the Domain Name.

4. Factual Background

Complainant, TPI Holdings, Inc. is the owner of a number of trademarks including AUTO TRADER, AUTOTRADER and AUTOTRADER.COM, used in connection with a variety of print and online publications featuring classified and/or display advertising in the field of automotive sales. Complainant has exclusively licensed the AUTO TRADER, AUTOTRADER and AUTOTRADER.COM marks to Cox Auto Trader, Inc., which, in turn, has exclusively sublicensed them to AutoTrader.com, Inc. Under the license agreements, all use of marks inure to the benefit of Complainant.

Since as early as January 1974, Complainant's exclusive licensee or its predecessor in interest has sold and distributed periodicals featuring vehicle classified and display advertising under the AUTO TRADER and/or AUTOTRADER marks. Since as early as August 1998, Complainant's exclusive sub-licensee, AutoTrader.com, Inc., has provided online vehicle classified and display advertising services under the AUTOTRADER.COM mark. Complainant is the owner of the <autotrader.com> domain name. Complainant has submitted evidence in support of its registered trademarks, including AUTO TRADER (dating from 1983 with first use in 1974) and AUTOTRADER.COM (dating from 2000 with first use in 1999). Complainant owns more than fifty other trademarks and service marks that include the term “trader” for a wide variety of printed and on-line publications featuring advertising, many of which are in the field of automotive-related products.

Under the AUTOTRADER.COM mark, AutoTrader.com, Inc. offers one of the Internet's largest selection of vehicles - approximately 3.5 million vehicles including new cars, used cars and certified pre-owned cars from 40,000 dealers and 250,000 private owners.

The Domain Name <autostrader.org> was created on August 12, 2007. As of the date of this decision, the Domain Name resolves to a landing page with links to various websites featuring new and used automotive vehicles.

5. Parties' Contentions

A. Complainant

Complainant states that it and its licensees and sublicensee have spent millions of dollars to advertise and promote their business, goods and services under the TRADER family of trademarks (including the AUTO TRADER marks). As a result, Complainant has developed extremely valuable goodwill and an outstanding reputation. Respondents are not licensees of Complainant, nor are they authorized to use any of Complainant's AUTO TRADER marks, or any other of the TRADER family of marks. The Domain Name was registered without the authorization, knowledge or consent of Complainant. As of April 30, 2009, the website to which the Domain Name resolved contained the framework of an automotive sales website, with links to automobiles for sale by third parties on eBay. On May 5, 2009, counsel for Complainant sent a demand letter to Respondent HostMonster.com. The letter demanded that it cease and desist use of the Domain Name and any mark that is confusingly similar to the AUTO TRADER marks and transfer the registration of the Domain Name to Complainant. After receipt of the demand letter, all content was removed from the website.

(1) Confusingly similar:

Complainant contends that the Domain Name is confusingly similar to the famous TRADER family of marks, including the AUTO TRADER marks, in which Complainant has well-established rights. In particular, the Domain Name is confusingly similar to the Complainant's AUTO TRADER marks in that it wholly incorporates the “AutoTrader” portion of the marks and merely pluralizes the word “auto” and adds the generic TLD “.org”. The addition of the generic TLD “.org” to a trademark to create a domain name is irrelevant when considering the similarity of a domain name (which must have a TLD) to the trademark. The fact that the Domain Name substantially incorporates the Complainant's marks and that the Respondents previously used the Domain Name to advertise products substantially identical to those marketed by the Complainant increases the likelihood of consumer confusion. Complainant states that so long as the Domain Name remains in the hands of Respondents, they have the ability to post content to their website and consumers would likely be attracted to such a site based on the mistaken belief that it is an authorized site where they can enter into transactions with businesses and individuals who have been accepted as advertisers on Complainant's “www.autotrader.com” website or in connection with one of Complainant's numerous other online or print products offered under its TRADER family of marks. For these reasons, the Domain Name is confusingly similar to Complainant's AUTOTRADER.COM and AUTO TRADER marks, as well as its other TRADER family of marks.

(2) No rights or legitimate interests:

Complainant urges that Respondents have no rights or legitimate interests in respect of the Domain Name. Respondents have never been authorized by Complainant to use any of the TRADER family of marks, including the AUTO TRADER marks. Moreover, Respondents have not engaged in bona fide use of the Domain Name. Respondents' prior use of the Domain Name to advertise third-party commercial websites, for which Respondents presumably received compensation in the form of “click through” or “web page impression revenues”, is not a bona fide use of the Domain Name, and does not constitute a legitimate, noncommercial use of the Domain Name under the Policy. Such use cannot be considered a “bona fide offering of services.” Consequently, the Respondents cannot prove they have any rights or legitimate interests in the Domain Name under Paragraph 4(c)(i) of the Policy because they cannot show that they used or demonstrably prepared to use the Domain Name in connection with a bona fide offering of goods or services prior to notice of the dispute.

Moreover, Complainant indicates that nothing in the WhoIs information or in any other information known about Respondents implies that either of them is commonly known by the Domain Name, and Respondents have not offered any proof of any trademark rights corresponding to the Domain Name. For these reasons, Respondents cannot establish rights in the Domain Name under paragraph 4(c)(ii) of the Policy because they are not commonly known as “autostrader.org” and have not acquired trademark mark rights in the Domain Name. In addition, Respondents cannot establish rights in the Domain Name under paragraph 4(c)(iii) of the Policy because they are not making a legitimate noncommercial or fair use of the Domain Name. To the contrary, Respondents' recent use of the Domain Name to misdirect potential visitors seeking Complainant's commercial website to the Domain Name's website and then to third-party commercial websites, for which activity Respondents have presumably received compensation, is not a bona fide use of the Domain Name, and does not constitute a legitimate, noncommercial use of the Domain Name under the Policy.

Complainant maintains that any use of the Domain Name by Respondents is rife with the potential for fraud in that Respondents could mislead visitors into believing that they are visiting a site sponsored by Complainant and making payment for purchases of non-existent automobiles or similar fraudulent transactions. For these reasons, Complainant argues that Respondents cannot establish that they have rights or legitimate interests in the Domain Name.

(iii) Registered and used in bad faith:

Complainant contends that the Domain Name has been registered and used in bad faith. Respondents have chosen as a domain name a word that is confusingly similar to Complainant's registered and well-known AUTO TRADER marks, which is evidence that the registration of the Domain Name was in bad faith. Respondents' use of the Domain Name to misdirect visitors seeking Complainant's website to third-party commercial automotive-related websites, for which Respondents presumably receive compensation, evidences that Respondents registered the Domain Name to deceptively attract and then misdirect Internet users for Respondents' own commercial gain, which constitutes bad faith under paragraph 4(b)(iv) of the Policy. Respondents have no legitimate business connection with the Domain Name; the only evident reason that Respondents use the Domain Name in this manner is to increase traffic to the website to which the Domain Name resolves by creating confusion with Complainant's AUTO TRADER marks. Respondents' use of the Domain Name to direct visitors to Respondent's advertising portal website is in bad faith because such use unfairly trades on Complainant's AUTO TRADER marks and threatens the integrity and valuable goodwill that Complainant has built up in such marks.

Moreover, Complainant urges that the trademark registrations of its TRADER marks provided Respondents with constructive notice of Complainant's marks prior to the registration of the Domain Name. Such notice supports a finding of bad faith. Given the notoriety of Complainant's famous marks, including the AUTO TRADER marks, Respondents registered the Domain Name with actual knowledge of the services provided by the Complainant on its “www.autotrader.com” website. Respondents' conduct constitutes bad faith under paragraph 4(b)(iv) of the Policy because Respondents' only possible purpose in registering and using the Domain Name would be to intentionally attempt to attract, for commercial gain, Internet users to the Domain Name by creating a likelihood of confusion with Complainant's marks as to the source, sponsorship, affiliation, or endorsement of its website in contravention of paragraph 4(b)(iv) of the Policy. Indeed, in light of Complainant's well-established rights in its marks, including AUTOTRADER.COM, there is no conceivable way in which Respondents could use the Domain Name in good faith. For these reasons, the Domain Name has been registered and used in bad faith.

B. Respondents

Respondents did not reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Under paragraph 4(a) of the Policy, Complainant must prove each of the following:

(i) the Domain Name in issue is identical or confusingly similar to Complainant's mark; and

(ii) Respondents have no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which for the purposes of paragraph 4(a)(iii) are evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which if proved by Respondents may be evidence of Respondents' rights to or legitimate interests in the Domain Name for the purpose of paragraph 4(a)(ii) above. In this case, however, the Respondents did not submit a Response.

A. Identical or Confusingly Similar

Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights. The Panel finds that the Domain Name is nearly identical to Complainant's well-known AUTO TRADER, AUTOTRADER and AUTOTRADER.COM marks, entirely incorporating two of these marks and adding merely the single letter “s,” which does not change the overall impression of the term, but merely appears to be a slight misspelling of Complainant's mark. The addition of the plural “s” is “an insignificant distinction that ‘do[es] not change the likelihood of confusion.'” See Complexions Rx, Inc. v. Julie Hogan, WIPO Case No. D2002-0484.

B. Rights or Legitimate Interests

The Policy in paragraph 4(c) provides examples of circumstances that can by relied upon by a respondent to demonstrate the existence of rights or legitimate interests in a domain name. While Complainant has provided evidence of its strong rights in the AUTO TRADER, AUTOTRADER and AUTOTRADER.COM marks, the Domain Name was registered by Respondents only recently in August 2007. Based on Complainant's submissions, the Panel considers that, at that time, Complainant had acquired a considerable reputation in its marks in respect of print and online publications featuring classified and/or display advertising in the field of automotive sales.

Complainant contends that Respondents have never been licensed or authorized to use Complainant's marks. Moreover, there is no evidence that either Respondent is commonly known by the Domain Name. The Panel can find no reason whatsoever for why the Domain Name <autostrader.org> was selected by Respondents. Moreover, Respondents' use of the Domain Name does not constitute a use in connection with a bona fide offering of goods and services, since Respondents' website was using a term virtually identical to Complainant's mark to direct Internet users to a commercial website offering links to services competitive with those offered by Complainant.

In line with previous UDRP decisions, the Panel considers that no rights or legitimate interests can be assumed in Respondents' conduct, in view of the fact that the Domain Name is confusingly similar to Complainant's trademark, there is no link between the Respondents and the Domain Name, and the Domain Name is used in connection with the promotion of competing services. See, Mudd (USA), LLC v. Unasi Inc., WIPO Case No. D2005-0727 (“Respondent is not using the website associated with the disputed domain name to offer its own products or services, but rather to show sponsored links and related categories links with the name of products competing with those of the Complainant . . . , with the clear purpose of diverting internet users through such links to other websites unrelated to the Complainant's official website and selling products similar to the Complainant's. Such use of the [complainant's] trademark by the Respondent does not establish legitimate rights or interests of Respondent in the disputed domain name.”); U-Haul International, Inc. v. Affordable Web Productions, WIPO Case No. D2003-0511 (“[U]se which is not bona fide cannot give rise to a legitimate interest in a domain name under the Policy. The Respondent's conduct in knowingly adopting confusingly similar and infringing domain names was not, in the Panel's view, bona fide use, and was therefore not capable of conferring a right or legitimate interest in the domain names.”).

In the light of the above analysis, Complainant has established a prima facie case, supported by evidence, that none of the circumstances establishing rights or legitimate interests applies. As stressed by many UDRP decisions, in such a case the burden of proof shifts to Respondents to rebut the evidence (see, among others, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683. However, because Respondents failed to submit an answer to the Complaint, and given that the allegations of Complaint prima facie do not raise any substantial doubts, the Panel accepts as true the allegations set forth in the Complaint and holds that Respondents have no rights or legitimate interests in respect of the Domain Name.

C. Registered and Used in Bad Faith

As mentioned above, Complainant has provided evidence of strong rights in its AUTO TRADER, AUTOTRADER and AUTOTRADER.COM marks in relation to print and online publications featuring classified and/or display advertising in the field of automotive sales. It is therefore highly unlikely that Respondents registered the Domain Name in August 2007 without knowledge of Complainant's marks. Instead, it appears that the Domain Name was intentionally registered, entirely incorporating Complainant's mark with a one-letter misspelling (i.e., “Autostrader” adding the “s”), to take advantage of the goodwill associated with Complainant's marks. This choice of a domain name that is confusingly similar to Complainant's registered and well-known AUTO TRADER marks is itself a factor to be weighed as evidence that the registration of the Domain Name was in bad faith. See, Symantec Corporation v. Nadeem Qadir, WIPO Case No. D2005-1193; Reebok International Limited v. Domain Privacy Service, Hong Kong Names LLC, WIPO Case No. D2008-0359 (“A contributing bad faith factor in this case is the fact that a trademark search on the date of registration of the disputed domain name would have revealed Complainant's long standing registrations in the United States of America.”); Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith when respondent knew or should have known of complainant's trademark and services at the time respondent registered the domain name).

Moreover, Respondents' use of the Domain Name to direct visitors to third-party commercial automotive-related websites, for which Respondents presumably receive compensation, evidences that Respondents registered the Domain Name to deceptively attract and then misdirect Internet users for Respondents' own commercial gain, which constitutes bad faith. See, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (registration for the purpose of profiting off of another's trademark constitutes bad faith); ITT Industries, Inc. v Katherine Kliszcz, WIPO Case No. D2000-1431 (use of domain name that contains complainant's mark and a generic term deemed use in bad faith because “it is difficult to conceive how [respondent] could make use of the domain name without causing confusion with [complainant's] registered trade mark”).

In this case Complainant has provided evidence of Respondent's bad faith registration and use of the Domain Name under the Policy to which, due to the lack of any response from the Respondent, there has been no attempt at any rebuttal. The Panel therefore concludes that the Respondent has registered and used the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <autostrader.org>, be transferred to the Complainant.

Christopher S. Gibson
Sole Panelist

Dated: November 19, 2009