WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

autobytel.com inc. v. Sand WebNames

Case No. D2001-0076

 

1. The Parties

The Complainant, is indicated in the Complaint as autobytel.com inc. ("Autobytel") (also spelled by the complainant in capital letters as AUTOBYTEL.COM INC.), a Delaware corporation with its principal place of business at 18872 MacArthur Boulevard, 2nd Floor, Irvine, California 92612-1400.

The Respondent is identified in the Complaint as Sand WebNames at Vukovarska 43, Split, 21000, Croatia.

 

2. The Domain Name(s) and Registrar(s)

The disputed domain name is: "autobuytell.com".

The Registrar is Network Solutions, Inc. of Herndon, Virginia, U.S.A. ("NSI").

 

3. Procedural History

The Complaint, which is in the format required by the ICANN Uniform Dispute Resolution Policy ("UDRP"), was filed electronically with the WIPO Arbitration and Mediation Center ("the Center") on January 16, 2001. A hardcopy of the complaint was received by the Center on January 19, 2001. The Center duly sought and obtained verification from the Registrar and a formal compliance checklist was completed on January 25, 2001. The Complaint certifies that the Respondent was duly served by the Complainant. On January 25, 2001, the Center duly served a Notification of Complaint to the Respondent both electronically and by courier. On February 19, 2001, the Respondent was duly notified that it was in default. On February 27, 2001, the sole Panelist, Howard Knopf of Ottawa Canada, was appointed, after an invitation had been issued and an acceptance and declaration of independence and impartiality had been duly returned.

The Panelist's decision was due on March 13, 2001. The Center was advised that, due to exceptional circumstances, the forwarding of the decision would be slightly delayed. It was forwarded to the Center on March 14, 2001.

 

4. Factual Background

The Panel notes that this is a default proceeding. The Respondent has made no submissions whatsoever.

The Respondent registered the disputed domain name with NSI on December 13, 1999 according to the WHOIS report provided by the Complainant.

The Complainant claims to be the owner of the website "autobytel.com", which it claims has been in operation since July, 1996 as a computerized on-line locating, selecting and ordering service for new and previously owned automobiles and trucks available for sale and lease. The Complainant also claims to be the owner of a "computerized on-line ordering service located at the Internet domain name auto-by-tel.com".

The Complainant claims to be the owner of certain United States Trademark Registrations, namely Nos. 2,028,377, 2,208,284, and 2,247,035 for the marks AUTO-BY-TEL and " autobytel.com".

According to the "true and correct copies of the registrations" (the Complainant's attorney's words) filed by the Complainant, the following information is disclosed:

USTPO Reg. No. 2,028,377, registered January 7, 1997, is a registration for the word mark AUTO-BY-TEL for electronic billboard advertising, etc. in the name of AUTO-BY-TEL, LLC, a California limited liability company with an address of 2711 E. Coast Highway, Corona, Del Mar, Ca 92625. The document provided by the Complainant appears to be an undated copy of the USPTO record for this registration.

USPTO Reg. No. 2,208,284 registered December 8, 1998, is a registration for a design mark that includes the word mark AUTO-BY-TEL for computerized on-line ordering of automobiles, etc. in the name of AUTO-BY-TEL CORPORATION, a Delaware Corporation with an address of 18872 MacArthur Boulevard, 2nd Floor, Irvine, CA, 926121400 (the same address as the Complainant). The copy of the document provided by the complainant is incomplete and appears to be the first page only of an undated copy of the USTPO record for this registration.

USTPO Registration No. 2,247,035 registered April 25, 1999 is for the word mark "autobytel.com" for computerized on-line ordering of automobiles, etc. in the name of AUTO-BY-TEL CORPORATION of 18872 MacArthur Boulevard, 2nd Floor, Irvine, California, 926121400, a Delaware Corporation. Once again, this appears to be the same address as that of the Complainant. This information is in the form of a print out from the USTPO Trademark Text and Image Database downloaded and printed from the Internet with an apparent date of "2/8/00".

The Panelist notes that the registration dates of all three of these U.S. trademark registrations, which are the only registrations referred to by the Complainant, predate the date of registration of the disputed domain name by the Respondent.

The Panelist also notes that none of these registrations is in the name of the Complainant, namely autobytel.com inc. (or AUTOBYTEL.COM INC., the difference of capitalization being immaterial in this context). This crucial point will be discussed below.

 

5. Partiesí Contentions

A. Complainant

The Complainant says that its trademark AUTOBYTEL is "well known", but has provided no evidence of this in the form of media comments, statistics on hits on its website, advertising expenditures, or any other data or information. The Complainant has also not filed any evidence of any trademark rights outside of the United States.

The Complainant alleges in paragraph 17 of its Complaint that the Respondentís "autobuytell.com" domain name is confusingly similar to the Complainant's "autobytel.com" domain name. The gist of the complaint is that:

"Autobytel is informed and believes that a number of people searching for its "autobytel.com" website have mistakenly been directed to Respondentís "autobuytell.com" website. Autobytel believes that it is Respondentís purpose, by taking advantage of this simple difference in spelling between the two sites, to intercept potential visitors to Autobytelís website and direct them instead to Respondentís website and from there to Autobytelís commercial competitors. It is self evident that "autobuytell.com" is confusingly similar to "autobytel.com" under Paragraph 4(a)(i) of the Policy."

The Complainant alleges in paragraph 19 ff. of its complaint that the Respondent has no rights or legitimate interest in the disputed domain name. The gist of the Complaint is that:

"The use by Respondent of the "autobuytell.com" domain name instead suggests illegitimate purposes. The first of these illegitimate purposes is to trade off and benefit from the goodwill and public recognition of the AUTO-BY-TEL mark and the associated "autobytel.com" website by creating confusion amongst consumers as to whether the "autobuytell.com" website is Autobytelís website. Further, the illegitimate purpose of Respondent is suggested by the fact that the "autobuytell.com" website is used as a link to other sites operated by Autobytelís commercial competitors which provide the same or similar services as Autobytel and directly compete with Autobytel. It can be assumed that Respondent derives an income from encouraging Autobytelís commercial competitors to advertise on the linked "bestoftheweb.com" site and take advantage of the confusion caused by the close similarity of the "autobuytell.com" domain name to Autobytelís legitimate "autobytel.com" domain name. It is clear that Respondentís use of "autobuytell.com" domain name is intended to attract to Respondentís website consumers who are in fact looking for and seek to use Autobytelís services. Anyone receiving a word of mouth recommendation of Autobytelís website could as easily find themselves accessing Respondentís website and from there websites of Autobytelís commercial competitors."

"On information and belief, Respondent has at no time conducted a business incorporating or using the name AUTOBUYTELL; nor is the name associated with or descriptive of any business carried on by Respondent. No reason suggests itself for the use by Respondent of the name AUTOBUYTELL in the disputed domain name other than to trade upon the well known and distinctive AUTOBYTEL mark belonging to Autobytel for the purpose of diverting Autobytelís trade to commercial competitors who subscribe to the Respondentís service. Respondent cannot assert that they have a right or legitimate interest in the "autobuytell.com" domain name as set forth in Paragraph 4 (c) of the Policy; nor are they making a legitimate non-commercial or fair use of the domain name under Paragraph 4 (c) (iii) of the Policy."

The Complainant alleges, as the third of the necessary three elements, that the Respondent is using the disputed domain name in bad faith. The essence of this allegation, contained in paragraph 21 of the Complaint is that:

"The facts that (1) Respondent has no apparent reason for selecting the name AUTOBUYTELL, (2) that the two domain names are almost identical so as to be extremely likely to create confusion, and (3) that Respondentís site is linked to Autobytelís commercial competitors are all suggestive of bad faith on the part of Respondent. The conclusion must be drawn that the domain name "autobuytell.com" was deliberately chosen to confuse those seeking the services of Autobytel and to divert them to Autobytelís competitors. This diversion of custom works to the commercial advantage of Respondent who derives income from allowing Autobytelís commercial competitors to be linked from a site linked to the site which masquerades as Autobytelís site. Respondent is deriving commercial advantage from marketing to Autobytelís competitors a means of getting access to Autobytelís potential Internet customers by diverting them when they misspell or mistake Autobytelís domain name."

The Complainant has filed no documents or exhibits, apart from the three documents noted with respect to trademark registrations, a WHOIS search, and a copy of an NSI Service Agreement.

B. Respondent

The Respondent is in default, as noted, and has not attempted to make any submissions in this matter.

 

6. Discussion and Findings

The Complainant faces a critical threshold problem in this dispute. On the evidence submitted, it is not apparent that the Complainant is the owner of or even has any rights in the trademarks on which it has chosen to rely. Paragraph 4(a)(i) of the UDRP requires that the Complainant must show that the disputed domain name is "identical or confusingly similar to a trademark or service mark in which the complainant has rights". (emphasis added).

The Complainant, as noted above, has submitted evidence of its rights based only upon three U.S. trademark registrations which are, according to the evidence as submitted, in names other than that of the Complainant. While it is entirely possible that the Complainant has the necessary rights that flow from these registrations, there is nothing in the submitted material upon which the Panelist can find such rights. While the registrants for the three cited trademarks appear to have similar corporate names to that of the complainant, this alone is insufficient to base any adequate proof. Even if the apparent registered owners and the Complainant are related entities (of which there is no evidence), this alone is not sufficient to confer rights on the Complainant.

According to the information given by the Complainant, the first registration (#2,028,377) is apparently owned by a California limited liability company with a different name than the Complainant at a different address than that of the Complainant, which is stated to be a Delaware corporation. The second and third registrations (#2,208,284 and #2,247,035) are also apparently owned by Delaware corporations with different names than the Complainant, albeit with the same address as the Complainant.

It may well be the case that the Complainant has a valid and sufficient chain of title to one or more of these three cited trademarks. Such title could derive through license, corporate merger, amalgamation, vertical relationship, change of name or simple assignment. However, there is nothing in the way of evidence on which the Panel can base a finding of any rights whatsoever in the hands of the Complainant.

It is a simple, fast, routine and inexpensive exercise for any party who is relying on rights based upon an American trademark registration to obtain a certified copy from the United States Patent and Trademark Office ("USTPO") of a registration that provides evidence of title and status. This will indicate any assignments that have been recorded and will indicate who owns the trademark, according to current USPTO records. According to the USTPO website, a "Certified copy of registered mark, with title and/or status, expedited local service" is available for $30 USD pursuant to 37 CFR 2.6(b)(4)(ii). (Footnote 1) If the Complainant has a basis for title by way of ownership, such a certified copy would presumably show it, unless the transaction was very recent. In such event, the basis of title could be demonstrated in other ways, such as filing a copy of the unrecorded assignment. Certified copies may not be needed in all instances. However, where ownership is not obvious, as in this instance, such certified copies would presumably fill in the gap.

To reiterate, there is no explanation and no evidence as to why the trademarks relied upon are apparently registered in different names than the Complainant.

A similar problem arose in a previous WIPO decision in which this Panelist presided. In D2000-1407, the Complainant relied on several trademarks, certain of which were on their face registered in the name of another entity. This Panelist stated:

No evidence is provided that the trade-marks referred to in these applications are the property of or adequately licensed to the actual Complainant, which is CTV TELEVISION INC., not CTV INC. Mere corporate relationship would not suffice to confer any relevant rights to the Complainant in this instance, and there is no evidence of it on record in any event. The Panel cannot simply infer or assume the existence of the necessary documentation. In default proceedings under the UDRP where questions arise pertaining to registrations or the status thereof, the Complainant must be held to an exacting standard.

(footnotes omitted)

Fortunately for the Complainant in that instance, it had other trademark registrations in its own name that were sufficient to carry the day.

At least one other Panelist has come to similar conclusions with respect to the need to establish a chain of title and the need for default proceedings to be based upon a firm basis of evidence. For example, in WIPO Decision No. D2000-0115, Panelist Andrew Bridges held:

Although Complainant also claims rights in Registration Nos. 1,117,368; 1,117,450; and 1,118,226, Complainant did not furnish copies of current certificates of renewal and the Panel does not take those registrations into account. The Panel will not undertake on its own to determine renewal status of registrations after the term shown on registrations furnished by parties. In cases of default, a Complainantís papers will be held to an exacting standard. (Footnote 2)

It is not a Panelist's role or responsibility and, indeed, it would be quite improper for a Panelist to deduce, guess, or infer, much less search or research questions sua sponte on any facts or information relating to trademark or service mark title or chain of title. It is not appropriate for the Panelist to be expected to connect the dots or fill in the blanks of an incomplete picture of ownership of rights. Nothing is more basic to this type of proceeding than a Complainant's chain of title. It is not a mere technicality. If a Complainant is going to rely on intellectual property rights, as it must, there must be adequate evidence of ownership or other sufficient entitlement to such rights. Such is the basis of intellectual property entitlement. A Panelist does not have the discretion to infer the existence of rights for which there is insufficient evidence. If the Complainant has the necessary rights in this instance, it is unfortunate that the minimally necessary evidence to demonstrate them was not presented.

The Panelist has considered whether, under the circumstances, it could or should afford the Complainant an opportunity to remedy the lack of evidence of chain of title in its Complaint.

Paragraph 12 of the UDRP Rule provides:

Further Statements

In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Partie"s.

(emphasis added).

Paragraph 14 of these Rues provides that:

14. Default

(a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint.

(b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.

(emphasis added)

Paragraph 15(a) of these Rules provides:

15. Panel Decisions

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

(emphasis added)

The Panelist takes these Rules as read together, having regard for what is permissive and what is mandatory, to mean that under very exceptional circumstances the Panel MAY, in its discretion, request a Party to provide additional material. However, there is also the consideration as spelled out in UDRP Rules, Paragraph 10(c), that these administrative panel proceedings take must take place with "due expedition":

10 (c) The Panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.

(emphasis added)

Accordingly, the Rules would indicate that, absent exceptional circumstances, a Complainant should not be afforded the opportunity, much less be requested, to file additional material to remedy a palpable and critical defect. These are summary proceedings and it would strain the Center's and Panel resources to prolong these types of proceedings.

Even more seriously, such a request could easily result in procedural unfairness to a Respondent, who may have chosen to respond in a certain way or even not at all -- whether such a choice was wise or not -- based upon the Complaint on its face. Ironically, the Complainant itself may feel aggrieved in some cases if proceedings were extended by a request from the Panel for additional material, because such a request would invariably call for an opportunity for the Respondent to consider and answer to the new material, and probably even to comment on the appropriateness of the request itself. A default proceeding could become a contested and very complicated one and an initially defended proceeding even more so.

These proceedings must be fair and must be seen to be fair; even where there has been a default and lack of response by the Respondent. There is an obligation on the part of a Complainant to "get it right the first time".(Footnote 3)

The failure to submit minimally satisfactory evidence of rights in a trademark or service mark does not constitute sufficiently exceptional or proper circumstances for the Panelist to exercise discretion and to request any further information from the Complainant. The Complaint in this matter must be decided on the basis of the filed documents.

This is sufficient to dispose of this matter because the Complainant MUST prove, according to paragraph 4(a)(i) of the UDRP, that it has rights in a trademark or service mark. In this instance, it has not done so. However, the Panel will briefly consider the other allegations by the Complainant.

With respect to the disputed domain name being identical or confusingly similar to a trademark or service mark, even assuming adequate rights therein, the Complainant relies on information and belief, the nature of which is unstated, that there is confusion. It may well be clear that AUTOBUYTELL and AUTOBYTEL sound identical, but they do not look identical and their spelling is different. Similarity or even identity in sound (a "homonym") is not, per se, determinative of confusion according to trademark or passing off principles. This is not clearly a "typo" or misspelling case, of which there have been numerous examples decided in favor of Complainants.

It is certainly not "self evident that "autobuytell.com" is confusingly similar to autobytel.com", as the Complaint states. Taken as read, these terms could have very different suggestive meanings. "BUY" means or suggests something different than "BY". Likewise, "TELL" means or suggests something different than "TEL". However, for the reasons noted above, it is not for the Panelist to infer or to speculate. Neither identity nor confusion is "self evident" in this instance and there is no proof whatsoever, not even a single e-mail or any other evidence of an actual confused third party. The situation is even less "self evident" when AUTOBUYTELL is compared to AUTO-BY-TEL, with its hyphens.

Likewise, there is no evidence that the Respondent has no rights in the term AUTOBUYTELL. While, as the Complaint suggests, it may indeed be relatively difficult to prove "beyond a shadow of doubt" that the Respondent has no rights, the Complainant should do more than merely state that "On information and belief, Respondent has at no time conducted a business incorporating or using the name AUTOBUYTELL; nor is the name associated with or descriptive of any business carried on by Respondent".(Footnote 4) It would be simple to provide at least some evidence of these allegations, in the form of an ownership search of the USTPO register, in this instance, because the Complainant's business is based in the U.S.A. The Panelist leaves aside the question of whether evidence ought to be furnished for Croatia.

On the issue of bad faith, the Complainant essentially reiterates its allegations of confusion, and refers to the nature of the website allegedly hosted by the Respondent and how it allegedly directs traffic to competitors of the Complainant for the indirect commercial advantage of the Respondent who is alleged to be deriving income from establishing these links. The Complainant alleges that the Respondent's website "masquerades" as the Complainant's site. However, no examples of these allegedly offending web pages, or any other relevant web pages, or the diverting links are submitted with the Complaint.

Although the Rules allow wide latitude to the Panel to make inferences favorable to a Complainant in the event of default, there must be at least some evidence on which to base such inferences. Given the nature of this type of proceeding, the evidence need not necessarily be the absolutely "best evidence". However, in this instance, virtually all of the evidence in based upon information and belief, the basis of which is wholly unspecified. It is simply alleged by the Complainant's attorney and not even by an officer or employee of the Complainant who might have at least a degree of personal knowledge.

On the substantive issues, the Complainant has not submitted sufficient evidence to justify its complaint, even allowing for the fact of the default in response. Essentially, it has submitted no evidence.

The Panelist commented on adequacy of evidence in WIPO decision D2000-1047, where the evidence was at least barely adequate, and the comments bear reiteration in this instance:

At least two UDRP Panels have already held that, in the event of default, the Complainant should be held to "an exacting standard". (Footnote 5)

While the appropriate rules of evidence are clearly not etched in stone for these types of proceedings and will be more relaxed than those of most courts given the summary nature of the proceedings and the universal desire to keep costs down, the Parties must still ensure that the evidence presented meets appropriate standards in terms of admissibility, relevance, materiality, weight, and last, but certainly not least, the "best evidence" rule. At least one panel has commented on how affidavit evidence will be preferred to unsworn evidence. (Footnote 6) Other panels have commented on the need to put forward the best evidence at the outset and, in effect, to "get it right the first time".(Footnote 7) Minimum standards of proof are needed, even if hearsay evidence will be admissible, and unnecessary formalities should be avoided in this type of summary administrative proceeding. (Footnote 8) The integrity of the UDRP process, which is intended to be highly transparent, along with its public credibility and acceptance, require attention to these principles

 

7. Decision

In view of Paragraph 4(i) of the UDRP and Paragraph 15 of the Rules and other provisions as noted above, and for the reasons stated above, this Complaint is hereby dismissed.

 


 

Howard Knopf
Sole Panelist

Dated: 14 March, 2001

 


 

Footnotes:

1. http://www.uspto.gov/web/offices/ac/qs/ope/1999/fee2000.htm#tmfee

2. WIPO Case No. D2000-0115 re tarzanonline.com, per Andrew P. Bridges.

3. WIPO Case No. D2000-0703 re iriefm.com, per Hon. Sir Ian Barker QC; WIPO Case No. D2000-0026 re 4tel.com, per Jordan Weinstein and WIPO Case No. D2000-0423 re telstrashop.com, per John Terry.

4. Complaint. Paragraph 20.

5. See WIPO Case No. DS2000-0336 re acrylite.com, per Dana Haviland and WIPO Case No. D2000-0115 re tarzanonline.com , per Andrew P. Bridges

6. See WIPO Case No. D2000-0566 re tabcorp.com, per Hon. Sir Ian Barker, Q.C..

7. See WIPO Case No. D2000-0703 re iriefm.com, per Hon. Sir Ian Barker QC; WIPO Case No. D2000-0026 re 4tel.com, per Jordan Weinstein and WIPO Case No. D2000-0423 re telstrashop.com, per John Terry.

8. See WIPO Case No. D2000-0336 re acrylite.com, per Dana Haviland.