WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings, Inc. v. Jason Guida
Case No. D2000-0269
1. The Parties
1.1 Complainant is TPI Holdings, Inc., a corporation organized under the laws of the State of Delaware, U.S.A., located in Atlanta, Georgia, U.S.A. Respondent is Jason Guida, an individual residing in Oceanside, New York, U.S.A. Complainant is represented by counsel, Kilpatrick Stockton, Atlanta, Georgia.
2. The Domain Name and Registrar
2.1 The domain names which are the subject of this proceeding are "boatandrvtader.com" and "boatrvtrader.com" owned by Jason Guida. The domain names are registered with Network Solutions, Inc., Herndon, Virginia, USA.
3. Procedural History
3.1 A Complaint was submitted to the WIPO Arbitration and Mediation Center ("WIPO") pursuant to the Uniform Domain Name Dispute Resolution Policy ("Policy") on April 6, 2000.
3.2 On April 10, 2000, a Request for Registrar Verification was sent to Network Solutions, Inc. which issued its verification on April 11, 2000.
3.3 The Notification of Complaint was sent from WIPO to Respondents by e-mail, courier, and facsimile on April 11, 2000.
3.4 Since no Response was filed within the time limit pursuant to Rule 5(a), a Notification of Respondent Default was sent on May 1, 2000.
3.5 The Notification of Appointment of an Administrative Panel ("Panel") was sent on May 10, 2000, thus commencing this administrative proceeding.
4. Factual Background
4.1 This Complaint is based on the trademark owned by Complainant as follows:
BOAT & RV TRADER
U. S. Registration No. 1,450,690
Issued August 4, 1987
4.2 The Complainant and its predecessors and affiliates, including its licensee, Trader Publishing Company, have adopted and used a number of marks incorporating the term "TRADER" since at least as early as 1974, including BOAT & RV TRADER, AERO TRADER, AUTO TRADER, CYCLE TRADER, BOAT TRADER, and RV TRADER, among others. Complainantís predecessor first used the BOAT & RV TRADER mark at least as early as 1985. Complainant, its predecessors and affiliates have used the BOAT & RV TRADER mark continuously since that time in connection with print publications that provide advertising and information about boats, recreational vehicles, and goods and services related to them. These publications are published and distributed by region throughout the United States. The publications allow users to place advertisements to sell their boats or recreational vehicles and to search for boats or recreational vehicles to purchase. Over the years, Complainant and its affiliates have extended use of the BOAT & RV TRADER mark to provide advertising and information about boats, recreational vehicles, and goods and services related to them via an online electronic communications network, utilizing the <boattraderonline.com>, <rvtraderonline.com>, and <traderonline.com> domain names.
4.3 By letter dated October 19, 1999, Complainant notified Respondent of Complainantís rights and requested that Respondent cease and desist from using the <boatandrvtrader.com> domain name. Counsel for Respondent contacted Complainant about resolving the domain name issue. After discussions in December, 1999, Respondentís counsel committed to get back to Complainant about a resolution. However, thereafter, Respondentís counsel would not respond to Complainantís repeated telephone messages left for Respondentís counsel.
5. Partiesí Contentions
5.1 The domain names at issue are confusingly similar to Complainantís marks because: The domain name <boatandrvtrader.com> is virtually identical and confusingly similar to Complainantís BOAT & RV TRADER mark in that the domain name uses the terms "BOAT and RV TRADER." Moreover, the marks are confusingly similar because the services that Respondent is providing or expects to provide are virtually the same as services provided by Complainant under its BOAT & RV TRADER mark. On Respondentís <boatandrvtrader.com> website, Respondent purports to: a) provide information about boats, campers, motorhomes, and recreational vehicles, b) allow users to search for items to purchase, and c) allow users to place ads for sales of such goods. These are precisely the advertising and informational services offered by Complainant in its Boat & RV TRADER publication and online at its websites.
5.2 Moreover, the domain name "<boatrvtrader.com>" is also virtually identical and confusingly similar to Complainantís BOAT & RV TRADER mark in that the domain name uses the terms "BOAT [and] RV TRADER" The deletion of the ampersand is not a distinguishing difference in that all the salient elements of the mark are included in the domain name. Moreover, since a user reaches the same site whether he seeks <boatandrvtrader.com> or <boatrvtrader.com>, the services that Respondent is providing or expects to provide under the domain name <boatrvtrader.com> are similar to those advertising and informational services provided by Complainant under the BOAT & RV TRADER mark.
5.3 The Respondent has no rights or legitimate interests with respect to the domain names because Complainantís (and its predecessorsí) first use and registration of its BOAT & RV TRADER mark predate any use Respondent may have made of "boatandrvtrader" or "boatrvtrader" as a tradename, domain name, or mark. Any use by Respondent would have taken place only recently and after Respondent had knowledge of Complainantís rights. Respondentís domain names were first registered in June, 1999, more than fourteen years after Complainantís first use of the BOAT & RV TRADER mark and more than twelve years after the registration for its mark issued. Prior to the domain name registration, Respondent had not previously published or distributed information about boats or recreational vehicles under the names "BoatandRVTrader" or "BoatRVTrader."
5.4 The domain names were registered, and to the extent they are being used, are being used in bad faith based on the following facts Complainant reasonably believes that Respondent, prior to its adoption and use of the domain names <boatandrvtrader.com> and <boatrvtrader.com> was aware that Complainant was the owner of the BOAT & RV TRADER mark because of Complainantís widespread and long-standing marketing and distribution in print and on the internet of publications under the TRADER family of marks, including the BOAT TRADER, RV TRADER and BOAT & RV TRADER magazines. Respondentís site shows that it is offering identical goods and services as Complainant, as shown by the Respondentís web pages. Just as Complainantís BOAT & RV TRADER print publications and websites allow the user to place advertisements through Complainant, Respondentís homepage touts its service that allows users to place ads "to sell your boat or rv." Just as Complainantís BOAT & RV TRADER print publications and websites allow the user to search for advertisements of boats and recreational vehicles that are for sale, Respondentís site that is shown for either <boatandrvtrader.com> or <boatrvtrader.com> tells the user that "In the [boats and rvs] sections, you will find a collection of nationwide ads, updated on a daily basis, to help you find the perfect boat or RV you are looking for." When a user clicks on the "boats" or "rvs" icon, he reaches a sale listing for a variety of boats or rvs respectively.
5.5 Aside from using a domain name that incorporates Complainantís trademark and offering goods and services that are virtually identical to Complainantís, Respondent has taken steps intended to confuse users with respect to Respondentís siteís source, affiliation or sponsorship with, or endorsement by Complainant as follows: a) the Respondentís web pages listing boats and rvs have a copyright notice that the copyright is owned by "Boat and RV Trader," a reference that is identical and confusingly similar to Complainantís mark; b) the"whyus"page from Respondentís site also indicates that the "classified ads section will offer a wide variety of services," which services on information and belief, include services related to boats and recreational vehicles, just as Complainant has provided such information for years under its BOAT & RV TRADER mark; c) Respondentís "whyus" page refers to Respondentís service as "online TRADER," a trademark reference to Complainantís TRADER family of marks and a reference that is confusingly similar to Complainantís<traderonline.com> domain name; and d) Respondent has misrepresented to users that it is Complainant. Complainant has been notified by its users that representatives of Respondentís website have claimed that they are affiliated with Complainant and its affiliates. These instances show an intentional attempt by Respondent to derive profit from selling advertisements for its site by creating a likelihood of confusion as to its siteís source or affiliation with Complainant. First, in August, 1999, Complainant received a report from one of its users that Respondent had solicited the user to place an advertisement with it. Respondent identified itself as calling from its Oceanside, New York office. When the user told the Respondent that he was unaware that Complainant had an Oceanside office, Respondent stated "Now we do." In addition, in September, 1999, another person that Respondent solicited for an advertisement complained to Complainant. Although the user had paid about $200 to Respondent, his advertisement had never appeared on the Respondentís website. He had asked Respondentís solicitor for the website advertisement if the website was the same company that published the BOAT & RV TRADER magazine and was told that it was.
5.6 By letter dated October 19, 1999, Complainant notified Respondent of Complainantís rights and requested that Respondent cease and desist from using the <boatandrvtrader.com> domain name. Counsel for Respondent contacted Complainant about resolving the domain name issue. After discussions in December, 1999, Respondentís counsel committed to get back to Complainant about a resolution. However, thereafter, Respondentís counsel would not respond to Complainantís repeated telephone messages left for Respondentís counsel. After having been notified of Complainantís rights, Respondent has nevertheless continued to utilize the <boatandrvtrader.com> and <boatrvtrader.com> domain names to provide the same goods and services as Complainant does under its BOAT & RV TRADER mark. On information and belief, by using the <boatandrvtrader.com> and <boatrvtrader.com> domain names to promote itself and to offer goods and services similar to those offered by Complainant, with full knowledge of Complainantís rights, Respondent is intentionally attempting, for commercial gain, to attract Internet users to its web site by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation or endorsement of its web site or of its products and services. On information and belief, Respondent is using the <boatandrvtrader.com> and <boatrvtrader.com> domain names in order to trade upon the public's recognition of Complainant's BOAT & RV TRADER mark and the goodwill associated with it.
5.7 Respondent is in default and has not filed a Response to the Complaint.
6. Discussion and Findings
6.1 Complainant must prove each of the following three elements set forth in the Uniform Domain Name Dispute Resolution Policy Paragraph 4(a), namely (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) Respondent has 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. The Panel will now look at each one of the elements to determine if Complainant has met its burden of proof.
6.2 Complainant has asserted rights in the registered trademark BOAT & RV TRADER. The Panel finds that the trademark and the domain names are identical or confusingly similar to the trademark of the Complainant, and that the Complainant has asserted and proven trademark rights in such term. Accordingly, the Panel finds that the Complainant has the requisite rights to object pursuant to Policy 4(a)(i).
6.3 There is no proof in the record of rights or legitimate interests of Respondent pursuant to Policy 4(c). Accordingly, the panel finds that Complainant has met its burden of proof concerning Policy 4(a)(ii).
6.4 The last element in the proceeding is bad faith. Policy 4(b)(iv) states "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location". Aside from using a domain name that incorporates Complainantís trademark and offering goods and services that are virtually identical to Complainantís, Respondent has taken steps intended to confuse users with respect to Respondentís web siteís source, affiliation or sponsorship with, or endorsement by Complainant as set forth above and in particular in Paragraph 5.5 above. Accordingly, the Panel finds that Respondent registered and is using the domain names in bad faith pursuant to Policy 4(a)(iii).
7.1 The Panel decides that the domain names "boatandrvtrader.com" and "boatrvtrader.com"are identical or confusingly similar to the trademark of Complainant, that Respondent has no rights or legitimate interests in such domain names, and that the domain names in issue have been registered and are being used in bad faith.
7.2 The Panel hereby orders that the registrations of the domain names "boatandrvtrader.com" and "boatrvtrader.com" be transferred to Complainant.
Clark W. Lackert
Dated: May 23, 2000