WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Autobytel.com Inc. v. Stancil Motors
WIPO Case No. D2001-0192
1. The Parties
Complainant is Autobytel.com Inc, a Delaware corporation with its principal place of business in Irvine, California, U.S.A. ("Autobytel").
Respondent is Stancil Motors, a business located in San Carlos, California, U.S.A. ("Stancil Motors"). Stancil Motors is owned by Edward Stancil, an individual ("Edward Stancil").
2. Domain Name and Registrar
The domain name in issue is <autosbytel.com>.
The registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Autobytelís complaint via email on February 6, 2001, and in hard copy on February 8, 2001. The Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), 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). Autobytel made the required payment to the Center. The formal date of the commencement of this administrative proceeding is February 13, 2001.
On February 7, 2001, the Center transmitted to NSI a request for registrar verification in connection with this case. On February 8, 2001, NSI transmitted via email to the Center NSIís Verification Response, confirming that (1) the registrant of the domain name in issue is Stancil Motors, (2) the domain name registration in issue is in "Active" status, and (3) NSIís 5 Service Agreement is in effect.
On February 13, 2001, the Center transmitted the Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint and the Amendement to the Complaint, to Stancil Motors. Inter alia, the Center advised that the response was due by March 4, 2001.
On March 4, 2001, the Center received via email Stancil Motorsí response to the complaint. On March 9, 2001, the Center received a hard copy version of the response.
On March 19, 2001, the Center notified the parties of the appointment of the undersigned as sole Panelist and that the due date for the decision is April 1, 2001.
On March 30, 2001, after the draft decision in this matter had been prepared and transmitted to WIPO, and more than seven weeks after the complaint had been received by WIPO, the Panel received via Federal Express a one inch thick bundle of papers under cover dated March 29, 2001 and purporting to comprise a schedule of documents augmenting or otherwise supporting averments in the complaint. Such a submission is not authorized by the Policy or any applicable rules. Indeed, Rule 3.(b)(xv) requires that
documents of the kind received on March 30, 2001 be included with the complaint. Nevertheless, Autobytel invites the Panel to exercise its discretion, under Rule 12, and consider the bundle of documents. The Panel did not request any further statements or documents, and the circumstances do not warrant the Panel's exercising its discretion in favor of considering the bundle of documents. This kind of late submission is precisely the kind of activity the Policy and Rules are designed to avoid. The tendering of this bundle of documents to the Panel has not affected the Panel's decision in any respect,
the draft decision having already been transmitted to WIPO as noted.
4. Factual Background; Partiesí Contentions
a. The Trademark
The complaint is based on the service marks AUTO-BY-TEL, AUTO-BY-TEL with design, and AUTOBYTEL.COM. The marks are registered on the Principal Register in the United States Patent and Trademark Office ("USPTO"). Copies of the first two registrations appear at Annex C to the complaint. Copy of a printout from the USPTO trademark text and image data base for the third mark also appears at Annex C. Autobytel avers that it owns the three service mark registrations. However, the documents at Annex C show the following:
AUTO-BY-TEL is owned by Auto-By-Tel, LLC, a California Limited Liability Company, located in Corona Del Mar, California.
AUTO-BY-TEL with design is owned by Auto-By-Tel Corporation, a Delaware corporation, located at Autobytelís current address in Irvine, California.
AUTOBYTEL.COM is owned by Auto-By-Tel Corporation, a Delaware corporation, located at Autobytelís current address in Irvine, California. (Footnote 1)
The USPTO documents show that the three service marks are for "electronic billboard advertising in the field of automobile and truck sales and leasing," "computerized on-line ordering of automobiles and truck via telephone," "computerized on-line ordering of automobiles, trucks, light-duty vans and sports utility vehicles," and the like. First uses of the service marks are reported to have been March 10, 1995, June 1995, and July 1995, respectively. The registrations were issued January 7, 1997, December 8, 1998, and
May 29, 1999, respectively.
Autobytel avers it provides advertising and sales representative services in the field of automobile and truck sales and leasing, including computerized on-line ordering service located at the Internet domain name <autobytel.com> Autobytel avers it has
"continuously and exclusively marketed, advertised and offered for sale and sold its services in connection with its AUTO-BY-TEL mark since at least March 1995 and in connection with the mark AUTOBYTEL.COM since at least July 1995."
Autobytel avers that, as a result of its "use and promotion," its marks "have acquired great value as identifiers of Autobytelís services and distinguished those services from the services of others." Autobytel asserts that, as a result of its "extensive advertising and sales," customers "readily recognize, identify and distinguish Autobytelís services from the service of others" by Autobytelís marks. Also, the marks are "extremely valuable symbols of Autobytel, its quality services and of the substantial customer goodwill that Autobytel has earned over many years." In addition, Autobytelís website at <autobytel.com> has been in operation since July 1995.
b. The Complaint Re Respondentsí Activities
Autobytel avers that all three elements of Policy Paragraph 4.(a) are met because:
1. the domain name is identical or confusingly similar to a trademark in which Autobytel has rights;
2. Stancil Motors has no rights or legitimate interests in respect of the domain name; and
3. the domain name was registered and is being used in bad faith.
Autobytel avers that Stancil Motors applied for and registered <autobytel.com> on January 28, 1997, and provides a WhoIs printout at Annex A. Autobytel avers the domain name
"leads users of the internet to Respondentís website which offers a service locating trucks, automobiles and other vehicles for sale and which provides the same or similar services as Autobytel."
Autobytel avers that Stancil Motorsí site "directly competes" with Autobytelís business and its website. Autobytel avers
"The registration and Respondentís use of the <autobytel.com> domain name is a deliberate attempt to divert internet users looking for Autobytelís <autobytel.com> site to Respondentís infringing <autobytel.com> site." Autobytel "believes" Stancil Motors undertook its course of action
"with the deliberate intent to trade upon the goodwill and substantial recognition associated with Autobytelís AUTO-BY-TEL mark and AUTOBYTEL.COM mark and internet domain name."
Autobytel asserts Stancil Motors,
"continues to use the infringing internet domain name AUTOSBYTEL.COM with the deliberate intent to cause confusion and mistake and to deceive and divert customers."
Autobytel avers the only difference between "Autobytelís domain names" and "the disputed domain name" is the letter "S". Autobytel "believes" it is Stancil Motorsí
"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 own competing website."
Autobytel avers confusing similarity under Policy Paragraph 4.(a)(i) is "self evident."
Autobytel avers Stancil Motors has no right to register or to use the domain name in issue and cannot "assert a legitimate interest in doing so." Further, Stancil Motorsí use of the domain name "suggests illegitimate purposes," namely,
"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, ..."
"AUTOSBYTEL.COM website provides the same or similar services as Autobytel and directly competes with Autobytel," and
Stancil Motorsí use of the domain name "is intended to attract to Respondentís website consumers who are in fact looking for and seek to use Autobytelís services."
Autobytel avers Stancil Motors has "at no time conducted a business incorporating or using the name Autobytel; nor is the name taken as a whole associated with or descriptive of any business carried on by Respondent." The only purpose for using the domain name is to divert Autobytelís trade to Stancil Motorsí competing website. Autobytel asserts Stancil Motors "cannot assert that it has a right or legitimate interest" in the domain name or that it is making "a legitimate non-commercial or fair use of the domain name."
Under the heading "Respondent Is Using The AUTOSBYTEL.COM Domain Name in Bad Faith," Autobytel avers the circumstances already set out demonstrate that Stancil Motors is using the domain name in bad faith. Autobytel iterates Stancil Motors (1) "deliberately created a likelihood of confusion," (2) "is using <autosbytel.com> to disrupt the business of Autobytel in part by exploiting the confusion generated by such registration and use of an almost identical domain name," and (3) has "no apparent reason for selecting the name AUTOSBYTEL for its site." Autobytel concludes that (1) the domain name was "deliberately chosen because of the commercial success of the AUTOBYTEL site to confuse those seeking the services of Autobytel and to divert them to Respondent," (2) Stancil Motors "is deriving commercial advantage from blatantly employing a means of getting access to Autobytelís potential Internet customers by diverting them when they misspell Autobytelís domain name ... or simply mistake Respondentís site for that of Autobytel," (3) "No other explanation presents itself," and (4) this constitutes evidence of "the use of a domain name in bad faith under Paragraph 4(b)(iv) of the Policy."
Autobytel requests that, in accordance with "Paragraph 4(b)(iv) of the Policy" the domain name in dispute be transferred to Autobytel.
Autobytel avers it has commenced legal proceedings against Stancil Motors "in connection with the subject matter of this Complaint" in the United States District Court for the Central District of California.
The complaint concludes with the requisite certification, signed by counsel, that the information in the complaint is complete and accurate.
c. The Response
The response comprises various averments and arguments augmented by Annexes A - H, the first of which is an unsworn "Declaration of Edward Stancil". (Footnote 2)
Stancil Motors (Footnote 3) avers that Edward Stancil "has been selling and acting as a broker for motor vehicles since 1966 and has since 1990 been the owner of Stancil Motors an independent new and used motor vehicle sales operation." Copies of State of California vehicle dealer licenses for Stancil Motors from June 1991 through May 2001 appear at Annex B to the response.
Stancil Motors avers it has used "AUTOS BY TELEPHONE" since 1979. In January 1997, Stancil Motors shortened "the phrase he had been using since 1980 and applied for and received ... the domain names autosbytel and carsbytel." Stancil Motors avers it has been using those domain names in its business since January 1997. Stancil Motors asserts it "was never notified by any means that there existed a dispute regarding his domain name autosbytel prior to being served by the Complainant with the Complaint on or about February 6, 2001." Stancil Motors avers inter alia it has been using "his legal domain name for over 4 years without any complaints."
Stancil Motors avers Autobytel fails to note that, notwithstanding the asserted first use of the mark AUTOBYTEL.COM in July 1995, Autobytel did not file for registration of the mark until April 15, 1997, and the prosecution history of the application shows "their Sec. 1(B) claim (prior use claim) was deleted" on January 9, 1998. Stancil Motors refers to Annex C to the response for a copy of a TARR search report. (Footnote 4)
Stancil Motors criticizes Autobytel for failing to point out that the registration date for its AUTOBYEL.COM mark post dates Stancil Motorsí registration and use of its domain name, and Autobytelís registration of its AUTO-BY-TEL mark preceded Stancil Motorsí registration and use of the domain name by only 21 days. Stancil Motors avers it had no knowledge of "the existence of the registration mark" at the time "he legally acquired and started using the domain name autosbytel." Stancil Motors concludes it "could not have intended to trade upon the goodwill and substantial recognition associated with the marks of AUTO-BY-TEL and AUTOBYTEL.COM."
Stancil Motors states it is "very evident that there is a similarity between both domain names." Stancil Motors avers that a search on the Internet yields no similarity in search results. Edward Stancil reportedly (Annexes A and D) conducted searches through 13 search engines on Autobytelís marks one at a time and on Stancil Motorsí domain name. Stancil Motors avers that of the 225 hits re Autobytelís marks none was Stancil Motorsí "site", (Footnote 5) and similarily, of the 8 hits re Stancil Motorsí domain name, none "belonged to" Autobytel.
Stancil Motors avers "a very large difference" exits between the services offered by Stancil Motors and by Autobytel. Stancil Motors asserts that it is legally providing services whereas Autobytel is "illegally providing the services." Stancil Motors avers that Autobytel is operating in California without the required dealerís license. Stancil Motors includes a copy of a portion of the California DMV Code at Annex E, plus search results at Annex F from the California Department of Motor Vehicles Occupational Licensing Department at Annex F showing "AutoByTel" held a license "for a short period of a few months in 1995 but then turned in the license telling the State of California that they [were] going out of business." (Footnote 6)
Stancil Motors avers that Autobytel is unable to prove all three elements set out in Paragraph 4.(a) of the Policy.
Stancil Motors contends Autobytel is using its marks illegally, i.e. without the requisite license, "to mislead and give apparent legitimacy to an activity that is in violation of the laws of the State of California." Stancil Motors asserts that Autobytel has not possessed a license to act as a dealer or broker since 1995 and has not produced any evidence it is operating legally in California. Stancil Motors cites two USPTO Trademark Trial and Appeal Board cases to support its contention that Autobytelís use of its mark is unlawful. Stancil Motors requests that the Panel "not extend any importance to the marks held by the Complainant."
Stancil Motors contends that it does indeed have rights and legitimate interests in its domain name in issue. Stancil Motors criticizes Autobytel for submitting no evidence in support of its allegations that Stancil Motors has no legitimate rights or interests in its domain name. As an example of its rights and legitimate interests in the domain name, Stancil Motors contends that more than four years before it was first notified on
February 6, 2001 of this dispute it started using the domain name in the bona fide offering of goods and services in full compliance with the laws of California in regard to buying, selling, etc., of motor vehicles.
Stancil Motors levels the same criticism with regard to Autobytelís averments as to Stancil Motorsí allegedly bad faith use. Assessing the situation in light of the circumstances set out in Paragraph 4.(b) of the Policy, Stancil Motors asserts:
Paragraph 4.(b)(i) -- Stancil Motors has never approached any one in an attempt to sell, rent of otherwise transfer the domain name in dispute. In fact, Stancil Motors has developed the web site "for the betterment of his business."
Paragraph 4.(b)(ii) -- Stancil Motors has registered only three domain names, two of which he acquired over four years ago and actively developed for his business. He acquired a third domain name two years ago that "he is working on to again develop his business of selling motor vehicles". (Footnote 7) Stancil Motors contends that "None of the domain names have prevented any one from reflecting their mark in a corresponding domain name." Also, it cannot be claimed that Stancil Motors has engaged in removing domain names from the pool of names available for holders of marks.
Paragraph 4.(b)(iii) -- "Respondent is a small business man in the middle of a bankruptcy without the resources to waste" on registering domain names primarily for the purpose of disrupting the business of a competitor. The results of the searches on the domain name and the marks in issue, which yielded no cross hits, show that Stancil Motorsí domain name cannot disrupt Autobytelís business.
Paragraph 4.(b)(iv), Stancil Motorsí domain names autosbytel and carsbytel both take "the searcher to carsbytel and an inspection of the carsbytel site shows absolutely no reference to AUTO-BY-TELL or AUTOBYTEL.COM." Thus, there can be no confusion. Searching AUTO-BY- TEL or AUTOBYTEL.COM yields hits on competing sites, but not on Stancil Motorsí autosbytel site.
Stancil Motors contends that nothing shows that it has registered or used the domain name in bad faith.
Stancil Motors requests that it be allowed to keep ownership of the domain name <autosbytel.com>.
Stancil Motors notes it has filed for a stay in the United States District Court action brought by Autobytel.
Stancil Motors, through its attorney, certifies that the information in the response is complete and accurate.
5. Discussion and Findings
In connection with Autobytelís request that the domain name in issue be transferred to Autobyel, Paragraph 4.(a) of the Policy directs that Autobytel must prove, with respect to the domain name in issue, each of the following:
(i) The domain name is identical or confusingly similar to a service mark in which Autobytel has rights, and
(ii) Stancil Motors 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.
Paragraph 4.(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.(a)(iii) above shall be 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 respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.
The Panel turns first to the Paragraph 4.(a)(i) requirements of the Policy.
a. Identity or Confusing Similarity
Autobytel has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy.
Stancil Motors does not challenge the similarity between Autobytelís service marks and the domain name in issue. This is not surprising. The marks and the domain name are virtually identical on their faces. Clearly, under Paragraph 4.(a)(i) of the Policy, the service marks and the domain name are identical for purposes of this proceeding.
Notwithstanding the questions raised by the USPTO records as to ownership of the service marks in issue, Stancil Motors does not challenge Autobytelís assertions of ownership. Thus, in light of Autobytelís unchallenged and certified claim of ownership, Autobytel has rights in the service marks.
On the other hand, Stancil Motors does challenge the enforceability of Autobytelís rights, in light of allegedly unlicensed activities in California. However, this Panel cannot draw the inference Stancil Motors draws. Simply because a license to AUTO BY TEL LLC was canceled in 1995 does not permit the Panel to conclude that Autobytel has not been licensed to do business in California. Other than the results of the inquiry that show the 1995 cancellation of a license to another entity, Stancil Motors has produced no other results of inquiries to the relevant governmental agency in California as to the current status of Autobytel or any related entity. Given Autobytelís assertions it has been using its marks continuously since 1995, and given the inferences raised by the USPTO documents in this record that different entities appear to have owned the marks at different times, the Panel cannot accept Stancil Motors incompletely documented assertion that Autobytel, Complainant here, has been operating illegally in California.
Thus, the Panel finds that Autobytel has demonstrated that it has rights in the AUTO-BY-TEL service mark and the AUTOBYTEL.COM service mark, and the domain name in issue is identical to those marks.
b. Rights or Legitimate Interests
On this record, Stancil Motors challenges Autobytelís assertions that Stancil Motors has no rights or legitimate interests in the three domain names in issue. The Panel thus turns to considering whether or not, in light of any of the three exemplary circumstances set out in Paragraph 4.(c) of the Policy, Stancil Motors has rights or legitimate interests in any of the three domain names.
Edward Stancil declares he has used "AUTOS BY TELPHONE" at various times on his business cards in 1980 and 1981 and from 1990 to the present. On January 28, 1997, he applied for and registered as a domain name a shortened form of that term, i.e. <autosbytel.com>. He claims to have been using in his business continuously since January 1997 both <autosbytel.com> and <carsbytel.com>. He claims also that he was unaware of any dispute as to his use of these domain names until he received a copy of the complaint in this proceeding on February 6, 2001. Autobytel does not aver that any notice or other communication about this dispute occurred before the service and filing of the complaint in this proceeding. In light of the averments of the parties, the issue as to Stancil Motorsí rights and legitimate interests is whether or not, "based on [the Panelís] evaluation of all the evidence presented," it has been proved that Stancil Motors satisfies the elements of Paragraph 4.(c)(i) of the Policy. (Footnote 8)
Paragraph 4.(c)(i) provides that Stancil Motorsí rights or legitimate interests in the domain shall be demonstrated if an evaluation of all the evidence presented shows:
"before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services."
The issue boils down to whether or not the Panel can find on this record sufficient evidence to conclude that, before notice to Stancil Motors of the dispute, Stancil Motors had used, or made demonstrable preparations to use, the domain name in issue in connection with a bona fide offering of goods or services.
Stancil Motors avers it has used the domain name in issue in its business continuously since January 1997 -- a period of more than four years before receiving notice of this dispute. Stancil Motors flatly contradicts Autobytelís assertions that (1) Stancil Motors has at no time conducted a business using "Autobytel", and (2) the domain name is not "associated with or descriptive of any business" carried on by Stancil Motors. Stancil Motors asserts it as been dealing in motor vehicles for years and has been using the autosbytel domain name in its business continuously since January 1997. Neither party has produced any contemporaneous documents to support its assertions.
Because Autobytel bears the burden of proving each element of Paragraph 4.(a), it cannot prevail in this contest of naked assertions. Accordingly, the Panel finds (1) sufficient evidence in the record to show that Paragraph 4.(c)(i) has been satisfied, and (2) Autobytel has not proven that Stancil Motors has no rights or legitimate interests in the domain name in issue.
c. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to be drawn from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Autobytel. Notwithstanding the Panelís finding with regard to rights and legitimate interests, the Panel has considered the issue of bad faith and discusses it below. The Panel does so in light of the assertions of both parties on this issue, and because a related action is pending in a United States District Court.
Autobytelís assertions center on the fourth of the illustrative circumstances set out in Paragraph 4.(b) of the Policy. (Footnote 9) The fourth circumstance is that "by using" the domain name, Stancil Motors has intentionally attempted to attract, for commercial gain, Internet users to his web sites, by creating a likelihood of confusion with Autobytelís service marks as to source, sponsorship, affiliation, or endorsement of Stancil Motorsí web site or of a product or service on its web site. (Footnote 10)
Autobytel draws a long bow in asserting that the only plausible reason for Stancil Motorsí choice of the domain name in issue was to derive commercial gain by intentionally seeking to cause confusion between the domain name and Autobytelís service marks. Stancil Motors has provided some evidence of bona fide use of the term "AUTOS BY TELEPHONE" for years before Autobytelís first use of its mark, as well as a plausible explanation as to why Stancil Motors in January 1997 chose the domain name in dispute.
Edward Stencilís statement as to no cross-hits from his 13 searches is not dispositive on this issue. Internet users may indeed be mistakenly diverted to Stancil Motorsí website by inadvertently inserting an "S" in the intended domain name. There is, on the other hand, no evident that this has occurred or that Stancil Motors intended that it occur.
Also, Stancil Motorsí assertions that it was unaware of the January 7, 1997 registration of the service mark AUTO-BY-TEL does not avail it. Trademark and service mark rights arise in the United States from use, not merely from registration. Autobytel has repeatedly claimed first use of its service marks in 1995 -- at least 18 months before Stancil Motors selected and registered the domain name in issue. Because both Autobytel and Stancil Motors were doing business in California, although perhaps miles apart, it is not beyond the realm of possibility that Stancil Motors was aware of Autobytel. Indeed, it is likely that Stencil Motors was aware of its competitor.
Here, also, the lack of contemporaneous documentary evidence has left the Panel to attempt to choose between conflicting and unsupported assertions. From the incomplete picture of the circumstances relevant to bad faith registration and use, the Panel concludes that Stancil Motorsí assertions and Edward Stancilís statements are sufficient to counter Autobytelís inferences. Accordingly, the Panel finds that Stancil Motors did not register and use in bad faith the domain name in issue.
In light of the findings by the Panel, the Panel determines that Stancil Motorsí domain name registration <autosbytel.com> should not be transferred to Complainant.
David W. Plant
Dated: March 31, 2001