The Complainant is Cox Automotive Australia Pty Ltd. of Altona North, Australia, represented by You Legal Pty Ltd., Australia.
The Respondent is A1 Auto Trader Pty Ltd of Minchinbury, New South Wales, Australia, internally-represented.
The disputed domain name <autotraderaustralia.com.au> (the “Disputed Domain Name”) is registered with TPP Wholesale Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2017. On October 26, 2017, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On October 30, 2017, TPP Wholesale Pty Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the “Policy” or “.auDRP”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 9, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was November 29, 2017.
On November 29, 2017 the Respondent submit a request for extension to file a Response. On December 1, 2017, the Center notified the Parties that the Response due date was extended until December 5, 2017. The Respondent submitted a brief email response on December 5, 2017. Accordingly, the Center notified the Parties it would proceed to appoint a panel on December 6, 2017.
The Center appointed John Swinson as the sole panelist in this matter on December 15, 2017. 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 Complainant is Cox Automotive Australia Pty Ltd, a company incorporated in Australia providing automotive services and solutions.
The Complainant owns the following registered trade marks:
- Australian registered trade mark number 777632 for the following stylized mark, registered on November 9, 1998, and entered on the Register on May 16, 2001:
- Australian registered trade mark number 1107660 for the following stylized mark, registered on April 5, 2006, and entered on the Register on February 22, 2007:
- Australian registered trade mark number 1690991 for AUTOTRADER registered on May 1, 2015, and entered on the Register on July 20, 2016 (together, the “Trade Mark”).
According to the Complaint, the Complainant’s predecessor began using the Trade Mark in Australia as early as 1989 in connection with the offering of print publications containing information about vehicles, and products and services related to them, and vehicle advertising services.
The Complainant owns a domain name which incorporates the Trade Mark, being <autotrader.com.au> (the “Complainant’s Website”). According to the Complaint, the Complainant registered and began operating its website in 2000.
The Respondent is A1 Auto Trader Pty Ltd, a company incorporated in Australia and the registered owner of the Disputed Domain Name. According to the Complaint, the Complainant and the Respondent are competitors. The Respondent did not file a formal Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on March 5, 2015. The website at the Disputed Domain Name advertises secondhand cars for sale and allows consumers to search for information about new or used cars.
The Complainant sent cease-and-desist letters to the Respondent concerning the Disputed Domain Name on June 9, 2017 and June 30, 2017. According to the Complaint, the Respondent did not reply to any of these letters.
The Complainant makes the following submissions.
The Disputed Domain Name is confusingly similar to the Trade Mark as it uses the term “autotrader” exactly and in its entirety.
The Respondent has added the term “Australia” to the Trade Mark to indicate the territory in Australia. This is a predictable addition in that an Internet user could easily add this term in trying to reach the Complainant’s Australian website.
The addition of “Australia” to the Trade Mark in the Disputed Domain Name does not distinguish the Disputed Domain Name and the Respondent’s business from the Complainant’s. Rather, it aligns with the Complainant’s Website and business, being an Australia-wide business.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no evidence that, prior to registering the Disputed Domain Name, that the Respondent had ever been known, or done business, as “autotraderaustralia.com.au”. The Respondent’s registered company is “A1 Auto Trader Pty Ltd”. The Respondent does not have any registered business names. It appears the Respondent trades as “Auto Trader”, which infringes the Trade Mark.
The Disputed Domain Name was registered long after the Complainant’s first use and registration of the Trade Mark, and after registration of the domain name associated with the Complainant’s Website which the Complainant has been operating since 2000. The Complainant’s Website was accessible to the Respondent at the time the Respondent registered the Disputed Domain Name.
The Respondent has constructive knowledge of the Trade Mark because:
- the Respondent had actual knowledge of the Complainant since the Respondent and the Complainant are competitors; and
- the Respondent has no intellectual property rights and the Respondent is infringing the Trade Mark.
The Respondent and the Complainant are competitors. Both parties operate a website that advertises secondhand cars and enables consumers to search for information about new or used cars.
The Complainant’s Website has long been operating and the Trade Mark is well-known among the consuming public and the automotive vehicle trading industry.
By registering the Disputed Domain Name, the Respondent registered a confusingly similar domain name to that used by the Complainant for the Complainant’s Website. It is reasonable to assume the Respondent did so to divert Internet users seeking the Complainant’s Website to its own website, and to trade off the goodwill in the Trade Mark.
The Complainant wrote to the Respondent on June 9, 2017 and June 30, 2017 notifying the Respondent of its complaint regarding the Respondent’s ownership of the Disputed Domain Name and requesting that the Respondent transfer the Disputed Domain Name to the Complainant. At the date of the Complaint, no response has been received by the Complainant from the Respondent.
The Complainant believes that the Respondent registered a variant of the well-known Trade Mark with the intent to take advantage of inadvertent mistakes by Internet users. This is evidence of bad faith registration, and specifically, of cybersquatting. This conduct disrupts the Complainant’s business and frustrates the Complainant’s customers or potential customers who do not realize their mistake and are apt to blame the Complainant for not having the web presence expected upon reaching the landing page, or who will instead use the Respondent’s services instead of searching again and using the Complainant’s services.
The Respondent did not formally reply to the Complainant’s contentions. However, on December 5, 2017, the Center received an informal email communication from the Respondent in which the Respondent stated that the terms “auto” and “trader” are “deemed generic by law” and as such cannot be the subject of trade mark rights.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered or has subsequently been used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a formal Response.
The Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
Paragraph 4(a)(i) provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
The Disputed Domain Name wholly incorporates the Trade Mark. The addition of the geographical term “Australia” does not prevent a finding of confusing similarity under this element as the Trade Mark is recognizable within the Disputed Domain Name (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark.
In this case, the generic Top-Level Domain “.com” and the country code Top-Level Domain “.au” do nothing to detract from this similarity.
The Complainant is successful on the first element of the Policy.
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
Under paragraph 4(c)(ii) of the Policy, a respondent is able to demonstrate its rights or legitimate interests in a domain name if it has been commonly known by the domain name, even if it has not acquired corresponding trade mark rights. Here, the Respondent operates an online car dealership at the Disputed Domain Name under the corporate name “A1 Auto Trader Pty Ltd”. It has used this corporate name since 2010. According to the Complaint, prior to 2010, the Respondent used the corporate name “AT NET PTY LTD”.
In some circumstances, a corporate name corresponding to a domain name is not sufficient to establish that a respondent is commonly known by a domain name (see, e.g., The Dannon Company Inc., Compagnie Gervais Danone v. Muhammad Bashir Ibrahim, WIPO Case No. D2016-2270 and section 2.12.2 of the WIPO Overview 3.0). To hold otherwise could be circular in a way that undermines the Policy. However, in this case, the Respondent also uses the trading name “Auto Trader”, which closely corresponds to the Disputed Domain Name.
In any case, the Panel does not need to decide whether the Respondent has been commonly known by the Disputed Domain Name, as the Panel considers that the Complainant has failed to establish a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name on the basis that, before notice of the dispute, the Respondent was using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant submits that, in trading as “Auto Trader”, the Respondent is infringing the Complainant’s Trade Mark. However, as noted by the Respondent, the Trade Mark is somewhat descriptive of the services provided by both the Complainant and the Respondent. Based on the limited evidence of record, the Panel considers it plausible that the Respondent selected the Disputed Domain Name for its descriptive nature. The Complainant has not provided sufficient evidence to satisfy the Panel that the Respondent selected the Disputed Domain Name to trade off the reputation of the Complainant or the Trade Mark. (Moreover, the Panel notes that the Trade Mark is not registered in respect of car dealership services.)
The Panel considers that the Complainant has not adequately shown that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, which means the Complainant has not met its burden.
In light of the above, the Complainant does not succeed on the second element of the Policy.
In light of the Panel’s decision in relation to the Respondent’s rights or legitimate interests in the Disputed Domain Name, the Panel is not required to address this element.
Overall, the Panel sees this as a claim for trade mark infringement and one better suited to a court which allows discovery and examination of further evidence. For all the foregoing reasons, the Complaint is denied.
Date: January 8, 2018
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