WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AutoNation, Inc. v. Paul Schaefer
Case No. D2001-0289
1. The Parties
The Complainant in this administrative proceeding is AutoNation, Inc. (AutoNation), a Delaware corporation with its principal place of business located in Fort Lauderdale, Florida, USA.
The Respondent in this administrative proceeding is Paul Schaefer (Mr. Schaefer), a Florida resident with an address located in Fort Myers, Florida, USA.
2. The Domain Names and Registrar
This dispute concerns the following domain names:
The registrar with whom the contested domain names are registered is Network Solutions, Inc. (NSI) of Herndon, Virginia, USA.
3. Procedural History
On February 26, 2001, AutoNationís Complaint was submitted in hardcopy to the WIPO Arbitration and Mediation Center (the Center) for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). See Rules, ∂ 3(b). An e-mail version of the Complaint was received by the Center on February 28, 2001.
It appears that the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules, that payment was properly made, and that AutoNation has complied with the formal filing requirements. On March 2, 2001, NSI verified that it is the registrar for the three contested domain names, that Version 5 of its service agreement with Mr. Schaefer is in effect, and that the contested domain names are in active status.
On February 22, 2001, AutoNationís counsel served the Complaint by United States mail, postage prepaid, return receipt requested, to Mr. Schafer. The Center has not been notified that AutoNationís service was unsuccessful. On March 8, 2001, the Center attempted delivery of its Notification of this administrative proceeding by courier and e-mail to the addresses listed for Mr. Schaefer, as well as the technical contact for the <auto-nation-direct.com> domain name, Hostmaster, Web2010 in Orlando, Florida. E-mail delivery attempts also were made to the "postmaster" for the contested domain names. The courier delivery to Mr. Schaefer in Ft. Myers, Florida was "returned to sender". There is no indication that the courier delivery to Hostmaster, Web2010 was returned, or that it did not reach its destination. There is no indication that the e-mail Notification to Mr. Schaefer and Hostmaster, Web2010 did not reach their destinations. The "postmaster" e-mail deliveries were returned with "fatal delivery errors". NSI is the technical contact for the <auto-nation-direct.net> and <auto-nationdirect.com> domain names. It acknowledged receipt of the Complaint from AutoNation.
The Panel deems that Mr. Schaefer was properly notified in accordance with the Rules, ∂ 2(a). However, it appears that a response was not timely filed. On March 29, 2001 a Notice of Default was sent by the Center to the parties by e-mail.
In its Complaint, AutoNation elected to have this proceeding decided by a single member panel. On April 9, 2001, the Center contacted the undersigned to solicit interest in being the sole panelist who would decide this matter. After investigating and clearing potential conflicts of interest, the undersigned notified the Center on April 10, 2001 of the ability and availability to serve as the sole panelist for this matter. On April 10, 2001, the undersigned submitted to the Center a Statement of Acceptance and Declaration of Impartiality and Independence. Thus, the administrative panel for this proceeding was properly constituted.
On April 11, 2001, the Center forwarded to the undersigned the case file for this proceeding. Also on April 11, 2001, a Notice of Appointment of Administrative Panel and Projected Decision Date was sent by the Center to the Parties. The Center notified the parties that the undersigned would be the sole Panelist to decide this matter.
4. Factual Background
AutoNation claims trademark rights in the United States and elsewhere in the world in the name and mark AUTONATION, and other marks incorporating AUTONATION, used in connection with automobile dealership services and related goods and services. AutoNation asserts rights in an AUTONATION "family of marks" dating back to at least as early as 1996, when it began using the mark AUTONATION USA in connection with its "AutoNation USA" automobile superstores. Since 1996, AutoNation asserts that it has expanded the AUTONATION family of marks to include marks such as AUTONATION, AUTONATION DIRECT, AUTONATION.COM, AUTONATIONDIRECT.COM, AUTONATION EXPRESS and AUTONATION USA CAFE.
In connection with these marks, AutoNation asserts that it has obtained numerous United States and foreign trade/service mark applications and registrations. Some of the referenced trade/service mark applications and registrations, it is asserted, are held by an affiliate of AutoNation, Inc. on AutoNation, Inc.ís behalf.
As an example, AutoNation attached to its Complaint United States Service Mark Registration No. 2,356,293 for the mark AUTONATION DIRECT. The registration was issued on June 6, 2000 with a filing/constructive use date of March 8, 1999. The registration asserts that the registered mark was first used, and first used in commerce, on June 22, 1999. The services listed in the registration are "financial services, namely, financing the purchase of new and used motor vehicles, and underwriting insurance and warranty contracts for new and used motor vehicles." AutoNation also asserts that it has pending three United States service mark applications, for which Notices of Allowance have been issued, for AUTONATION (Serial No. 75/644,785 for "automobile dealership services"), AUTONATION (Serial No. 75/644,787 for "financial services, namely, financing the purchase of new and used motor vehicles, and underwriting insurance and warranty contracts for new and used vehicles") and AUTONATION (Serial No. 75/644,788 for "automotive repair and maintenance services"). The file histories for these three applications were not provided to the Panel.
AutoNation also claims ownership of numerous registrations for the marks AUTONATION and AUTONATION DIRECT in several foreign countries, in connection with automobile dealership services, financial services related to the purchase of new and used motor vehicles, automobile repair and maintenance services and other automotive-related goods and services. Copies of these registration certificates were not provided to the Panel.
AutoNation asserts that in the fall of 1996, it began a nationwide roll-out of its AutoNation USA automobile superstores. The first AutoNation USA superstore was opened in Coconut Creek, Florida and its early development remained focused in the South, near AutoNationís headquarters in Fort Lauderdale, Florida. By 1997, AutoNation states that it had established more than two hundred dealer franchises in 17 states, to become the largest car dealer in the country within a year. Currently, AutoNation says it is the largest automotive retailer in Florida and the United States, operating more than four hundred vehicle franchises from dealership locations in twenty-six major metropolitan markets in nineteen states. AutoNation states that, since its inception, it has invested substantial sums of money to develop the AutoNation name, service marks, logos and related advertising and marketing campaigns.
In June, 1999, AutoNation launched its AUTONATIONDIRECT.COM online dealership services, which AutoNation asserts is the Internetís largest automobile dealership site. In December, 1999, the news media had reported that AutoNation was selling approximately 5,000 vehicles per month via the Web and had exceeded the one billion dollar sales mark for online automobile sales through its <autonationdirect.com> site.
In support of the assertions concerning the development of its name, marks, and business, AutoNation attached to its Complaint copies of news articles appearing in U.S. News & World Report on September 9, 1996 and December 15, 1997, press releases issued by AutoNation on June 22, 1999 and December 23, 1999, and a news article appearing in the Wall Street Journal on December 27, 1999. AutoNation also submitted a copy of its 1999 Annual Report, which describes its prior used and rental car businesses, and its new focus on new car retail sales, both in the live market place and over the Internet. During the pendency of this proceeding, the Panel reviewed AutoNationís web site, which is accessible via either of the URLs http://www.autonationdirect.com or http://www.autonation.com. The Panelís review of AutoNationís web site supports AutoNationís assertions regarding the uses it claims to have made and be making of its marks and domain names.
On July 24, 2000, counsel for AutoNation sent a letter to Mr. Schaefer via Certified U.S. Mail to the address indicated he listed in NSIís WhoIs database. In this letter, counsel for AutoNation (i) asserted AutoNationís ownership rights in the names and marks AUTONATION, AUTONATION DIRECT and AUTONATIONDIRECT.COM, (ii) informed Mr. Schaefer that his registration and use of the contested domain names in connection with automobile related services was infringing AutoNationís rights, and (iii) demanded that Mr. Schaefer cease his infringement, and (iv) requested that Mr. Schaefer assign the contested domain names to AutoNation. Mr. Schaefer did not respond to this letter.
On September 29, 2000, counsel for AutoNation sent a second letter to Respondent via to Mr. Schaefer via Certified U.S. Mail to the address indicated he listed in the NSIís WhoIs database. In this second letter AutoNation renewed its previous demands, to which Mr. Schaefer did not respond.
During the pendency of this proceeding, the Panel reviewed the web sites or web pages that resolved to the URLs http://www.auto-nation-direct.com, http://www.auto-nation-direct.net, and http://www.auto-nationdirect.com. The domain name <auto-nation-direct.com> resolves to the web site bearing the header "Direct Internet Auto Sales". This site describes itself as "a virtual car lot that offers all makes and models of new and used cars and trucks." The site offers automobile-related services such as helping customers purchase cars, assisting with financing and delivering the purchased car. The domain names <auto-nation-direct.net> and <auto-nationdirect.com> resolve to standard NSI "Under Construction" pages.
5. Partiesí Contentions
AutoNation asserts that (i) the three contested domain names are identical or confusingly similar to trademarks or service marks in which it has rights; (ii) Mr. Schaefer has no rights or legitimate interests in respect of the domain names; and (iii) that the domain names were registered and are being used by Mr. Schaefer in bad faith.
Mr. Schaefer has not made his position known in this administrative proceeding, as he is in default in answering the Complaint.
6. Discussion and Findings
Transfer or cancellation of the contested domain names will be ordered if AutoNation has shown that the following three elements are present:
(i) the contested domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain names; and
(iii) the contested domain names have been registered and is being used in bad faith.
In an administrative proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements are present. Policy, ∂ 4(a).
The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrantís documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it is shown that the registrant has engaged in a pattern of such conduct; or
(iii) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrantís web site or location or of a product or service on his web site or location.
Policy, ∂ 4(b).
On the other hand, any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the registrantís rights or legitimate interests to the domain name:
(i) before any notice to the registrant of the dispute, his 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; or
(ii) the registrant (as an individual, business, or other organization) have been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
(iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Policy, ∂ 4(c ).
Mr. Schaefer had the opportunity to respond and present evidence that he has rights or legitimate interests in respect of the contested domain names. He chose not to do so. AutoNation is not entitled to relief simply by reason of Mr. Schaeferís default. However, the Panel can and does draw evidentiary inferences from Respondentís failure to respond. See Miles D., Ltd. dba Jazz Alley v. Shosha, Case No. AF-00318 (eResolution, August 29, 2000), citing, Royal Bank of Canada v. D3M Domain Sales, Case No. AF-0147 (eResolution, May 1, 2000).
For example, Paragraph 14 of the Rules provides that:
"(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."
The Contested Domain Names are Confusingly Similar to the AUTONATION and AUTONATION DIRECT Marks.
The Panel finds, based upon the evidence submitted, that (i) AutoNation has registered and common law rights in the mark AUTONATION DIRECT and common law rights in the mark AUTONATION in the United States, and that (ii) AutoNation possessed these rights prior to Mr. Schaeferís registration of the contested domain names. Due to lack of evidence, the Panel does not find that (iii) AutoNation has trademark or service mark rights in a "family" of AUTONATION marks, or that (iv) AutoNation has trademark or service mark rights in any marks comprising AUTONATION outside the United States. Neither of the Panelsí latter negative findings Nos. (iii) or (iv), however, are necessary to the Panelís decision.
The Domain Names <auto-nation-direct.com>, <auto-nation-direct.net> and <auto-nationdirect.com> each are comprised of the wording "autonation direct," which is identical to AutoNationís registered service mark AUTONATION DIRECT and confusingly similar to AutoNationís common law service mark AUTONATION. The presence or absence of hyphenation or punctuation or the top level domains <.com> or <.net> are of no consequence when establishing the identity or confusing similarity of the disputed domain names to AutoNationís marks. See, Barneyís Inc. v. BNY Bulletin Board, Case No. D2000-0059 (WIPO April 2, 2000) ["That Respondent has omitted the punctuation and spacing that appears in Complainantís mark from the domain name does not defeat this identity." And "[t]he top level domain designator Ď.comí simply functions to indicate that the domain name owner purports to be a business."].
Respondent has no Legitimate Rights or Interests in the Contested Domain Names.
There is not evidence that Mr. Schaefer has made any use of the name "Auto Nation" or "Auto Nation Direct" as a trade name or trademark or for any legitimate purpose. As they resolve to standard NSI "Under Construction" pages, there is no proof that Mr. Schaefer has made any use of the domain names <auto-nation-direct.net> or <auto-nationdirect.com>. As such, he has not established rights or legitimate interests to the registration and use of these two domain names.
Mr. Schaeferís only use of the name "Auto Nation Direct" is as a domain name that links to his "Direct Internet Auto Sales" web site. In fact, there is no mention of the name "Auto Nation" or "Auto Nation Direct" on the <auto-nation-direct.com> site. Accordingly, Mr. Schaeferís web site at the URL http://www.auto-nation-direct.com does not show a legitimate trademark or service mark use of any names or marks corresponding to the contested domain names.
Moreover, Mr. Schaeferís use of the domain name <auto-nation-direct.com> to link to his "Direct Internet Auto Sales" web site is a violation of AutoNationís rights. Mr. Schaeferís site purports to be "a virtual car lot that offers all makes and models of new and used cars and trucks." The site offers automobile-related services such as helping customers purchase cars, assisting with financing and delivering the purchased car. Such use infringes AutoNationís exclusive right to use the names and marks AUTONATION and AUTONATION DIRECT in connection with such automobile related goods and services. Because Mr. Schaeferís use of the domain name <auto-nation-direct.com> is an infringing use of AutoNationís service marks, Mr. Schaefer cannot have established any legitimate right or interest in this Domain Name. "An infringing use of Complainantís trademark can not give rise to a legitimate right or interest on the part of Respondent (the Policy 4(a))." The Chase Manhattan Corp. et al. v. Whitely, Case No. D2000-0346 (WIPO June 12, 2000).
The Domain Names Were Registered and are Being Used in Bad Faith
According to NSIís WhoIs database, Mr. Schaefer is an individual with a place of business and/or residence located in Fort Myers, Florida. AutoNationís headquarters are located in Fort Lauderdale, Florida. Thus, both Mr. Schaefer and AutoNation are located in southern Florida, and Mr. Schaefer could not possibly have been ignorant of his largest competitor which also happens to be headquartered in his own back yard. See, Barneyís Inc. v. BNY Bulletin Board, Case No. D2000-0059 (WIPO April 2, 2000) ["Complainantís high profile presence in the retail market Ö would further tend to indicate that Respondent was aware of Complainantís rights therein."].
Mr. Schaefer currently uses the Domain Name <auto-nation-direct.com> to link to his "Direct Internet Auto Sales" web site which offers a variety of automobile-related services. Such usage leads consumers to a service nearly identical to that offered by AutoNation. Thus, Mr. Schaefer clearly intends to benefit from AutoNationís goodwill in its name and marks. Such intentional infringement designed to "parasitiz[e] the goodwill of Complainantís trademark" "is compelling evidence of bad faith in the registration and use of the disputed domain name." The Chase Manhattan Corp. et al. v. Whitely, Case No. D2000-0346 (WIPO June 12, 2000). In other words, Mr. Schaefer registered the domain names and is using at least one of the domain names "to attract, for commercial gain, Internet users to [his] 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 [his] web site or location or of a product or service on [his] web site or location." Policy, ∂ 4(b)(iv).
The Panel further finds that Mr. Schaefer registered the disputed domain names in order to prevent AutoNation from reflecting its mark(s) in corresponding domain names, and it has been shown that Mr. Schaefer has engaged in a pattern of such conduct. The Panel additionally finds that Mr. Schaefer registered the contested domain names primarily for the purpose of disrupting the business of a competitor. Policy, ∂∂ 4(b)(ii) and (iii).
As additional evidence of bad faith, Mr. Schaefer utterly failed to respond to AutoNationís communications seeking to resolve this matter amicably. The failure to respond positively to a Complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica, Inc. v. Zuccarini et al., Case No. D2000-0330 (WIPO June 7, 2000); eBay Inc. v. Sunho Hong, Case No. D2000-1633 (WIPO January 18, 2001).
AutoNation has provided ample evidence to meet all three elements required to prevail under the Policy, Paragraph 4(a): (i) the disputed domain names are identical and/or confusingly similar to service marks in which AutoNation has rights; (ii) Mr. Schaefer has not demonstrated his rights or legitimate interests in respect of the domain names or any corresponding name or mark; and (iii) Mr. Schaefer registered and is using the domain names in bad faith.
For the foregoing reasons, the Panel directs that the contested domain names <auto-nation-direct.com>, <auto-nation-direct.net>, and <auto-nationdirect.com> be transferred to Complainant, AutoNation, Inc.
Dated: April 24, 2001