WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AutoNation, Inc. v. Sticky Web, Inc. f/k/a e-Possibility.com, Inc. and Successor by Merger of The Perfect Web Corporation
Case No. D2001-0442
1. The Parties
The Complainant is AutoNation, Inc., a Delaware corporation with a principal place of business at 110 Southeast Sixth Street, 20th Floor, Fort Lauderdale, Florida 33301, USA.
The Respondent is e-Possibility.com, Inc. (now known as Sticky Web, Inc.), a Florida corporation with a principal place of business at 411 East Atlantic Avenue, #6, Delray Beach, Florida 33483, USA (Footnote 1).
2. The Domain Name and Registrar
The dispute concerns the domain names <auto-nation.com> and <auto-nation.net>, hereinafter the Disputed Domain Names. The Registrar with which these Domain Names are registered is Network Solutions, Inc. with a business address at 505 Huntmar Park Drive, Herndon, Virginia 20170, USA.
3. Procedural History
On March 27, 2001 and April 3, 2001, respectively, the World Intellectual Property Organization Arbitration and Mediation Center (the WIPO Center) received a Complaint electronically and by hard copy for a decision in accordance with the 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). On April 4, 2001, a revised Annex A was received.
On March 30, 2001, the WIPO Center sent a Request for Registrar Verification to the Registrar. On April 3, 2001, the Registrar confirmed to the WIPO Center that it was the Registrar of the said Domain Names and that the current registrant of the said Domain Names was the Respondent or a predecessor in interest of Respondent..
On April 12, 2001, having found that the Complainant had satisfied the formal requirements of the Policy, the Rules, and the Supplemental Rules, the WIPO Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier, facsimile, and e-mail to the Respondent and transmitted electronically copies of said documents to the Complainant, ICANN, and the Registrar. The said Notification particularized the formal date of the commencement of this administrative proceeding as April 12, 2001, and required the Respondent to submit a Response to the Complaint within 20 calendar days from the date of receipt of the Notification (by May 1, 2001), failing which the Respondent would be considered to be in default.
The Respondent failed to file the Response with the WIPO Center by the response due date. On May 2, 2001, the WIPO Center sent a Notification of Respondent Default to the Respondent by e-mail and copied the Complainant via e-mail. The Complainant elected to have the dispute decided by a single-member panel (the Panel). On May 22, 2001, the WIPO Center appointed Mr. Terrell C. Birch to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant and the Respondent and copied it to the Panel by e-mail. On the same day, the WIPO Center sent a Transmission of Case File to the Panel.
The Panel finds that the WIPO Center has discharged its obligations and responsibility under the Rules. The Panel will hereby issue its Decision based on the Complaint, the Policy, the Rules, and the Supplemental Rules, without the benefit of any Response from the Respondent.
4. Factual Background
Complainant, AutoNation, Inc., has established exclusive, worldwide rights in the name and mark AUTONATION, and other marks incorporating AUTONATION, as used in connection with automobile dealership services and related goods and services. AutoNation, Inc.ís rights in the AUTONATION family of marks date 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 that time, AutoNation, Inc. 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, Inc. or an affiliate of AutoNation, Inc. on behalf of Auto Nation has obtained numerous United States and foreign trade/service mark applications and registrations. For example, AutoNation, Inc. has pending United States 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"), AUTONATION (Serial No. 75/644,788 for "automotive repair and maintenance services") and AUTONATION DIRECT (Serial No. 75/655,398 for "automotive repair and maintenance services"). AutoNation, Inc. also owns United States Federal Registration No. 2,356,293 for AUTONATION DIRECT, which was issued on June 6, 2000 with a filing/constructive use date of March 8, 1999 and a first use date of at least as early as June 22, 1999 for "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, Inc. also owns numerous foreign registrations, including registrations for AUTONATION (in Argentina, Australia, Benelux, Brazil, Canada, the European Community, Germany, Japan, Mexico, New Zealand, Switzerland and the United Kingdom) and AUTONATION DIRECT (in Argentina, Australia, Benelux, Brazil, Canada, the European Community, Germany, Japan, Mexico, New Zealand, Switzerland and the United Kingdom). Each of these registrations are 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.
Respondent is using the Domain Name and the name <auto-nation.com> in connection with a Website that provides information and links regarding "new car buying, new car prices, used cars, classifieds and instant auto insurance rates."
Furthermore, Respondentís other actions with respect to the Domain Names confirm that Respondent has no rights or legitimate interests in the Domain Names. First, Respondent, successor by merger of "The Perfect Web Corporation," has registered the domain name <auto-nation.net>, which also corresponds to the name and mark AUTONATION. (Footnote 2) Although Respondent did not put the domain name to any legitimate use, Respondent was, however, publicly offering to sell this domain name. (Footnote 3) If Respondent had any rights or legitimate interest in the Domain Name and/or the name AUTO-NATION, Respondent would not be auctioning its corresponding domain name to the highest bidder.
On June 14, 2000, counsel for AutoNation, Inc. sent a letter to Respondent via Federal Express to Respondentís principal place of business, the same address indicated for Respondent in the NSI WHOIS database. In this letter, counsel for AutoNation, Inc. explained that AutoNation, Inc. owns the exclusive, worldwide rights in the name and mark AUTONATION and informed Respondent that its use of the name AUTO-NATION and the Domain Name <auto-nation.com> in connection with automobile-related services is infringing of AutoNation, Inc.ís rights. The letter further demanded that Respondent cease its infringement by virtue of its use of the domain name <auto-nation.com> "and any and all colorable imitations thereof" and assign the <auto-nation.com> domain name to AutoNation, Inc. Notwithstanding AutoNation, Inc.ís allegations of infringement and demands, Respondent has not issued any response whatsoever to this letter.
In the fall of 1996, AutoNation, Inc. began the nationwide roll-out of its AutoNation USA automobile superstores. The first AutoNation USA superstore was opened in Coconut Creek, Florida and the early development remained focused in the South, near AutoNation, Inc.ís headquarters in Fort Lauderdale, Florida. By 1997, AutoNation, Inc. had established "more than two hundred dealer franchises in 17 states, becoming the largest car dealer in the country within a year." Currently, AutoNation, Inc. remains 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. Since its inception, AutoNation, Inc. has invested substantial sums of money to develop the AutoNation name, service marks, logos and related advertising and marketing campaigns.
On November 14, 1995, AutoNation registered the domain name <autonation.com>. In June of 1999, AutoNation, Inc. launched its <autonationdirect.com> online dealership services Ė the Internetís largest automobile dealership site. In December 1999, the Wall Street Journal reported that AutoNation, Inc. was selling about 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. The name of Complainantís website was subsequently shortened to <autonation.com>.
According to the NSI WHOIS database, Respondent is a Florida corporation with a principal place of business located at 411 East Atlantic Avenue, #6, Delray Beach, Florida 33483. Based on information discovered by an independent private investigator, both of Respondentís officers of record are residents of Florida. Specifically, Respondentís President, Thomas Distevano III, resides at 2898 NW 26th Court, Boca Raton, FL 33434 and Respondentís Vice President, Christopher L. Monteleone, resides at 9232 Arbor Woods Circle, Davie, Florida 33328. Boca Raton and Davie are both located in the Fort Lauderdale area. Thus, Respondent and its officers could hardly have been ignorant of AutoNation, Inc., their largest competitor, which also happens to be headquartered in their own back yards.
Respondent currently uses the Domain Name and the name <auto-nation.com> in connection with a Website that provides information and links regarding "new car buying, new car prices, used cars, classifieds and instant auto insurance rates." Such usage leads consumers to a service nearly identical to that offered by AutoNation, Inc.
Moreover, the NSI WHOIS records indicate that Respondent registered the Domain Name <auto-nation.net> on January 21, 1999 only to place it for sale. Respondent then registered the Domain Name <auto-nation.com> on November 30, 1999 Ė just as AutoNation, Inc.ís online business was approaching the one billion dollar sales mark. Thus, Respondentís actions and the timing of Respondentís registration also strongly indicates that Respondent registered and uses the Domain Names in order to intentionally infringe AutoNation, Inc.ís name and mark.
5. Partiesí Contentions
Essentially, the contentions of the Complainant are as follows:
1) Complainant has valid and subsisting rights in its AUTONATION trademarks/service marks and its Domain Name - <autonation.com>.
2) Respondent has no rights or legitimate interests in the Disputed Domain Names.
3) The Disputed Domain Names were registered and are being used in bad faith.
In view of the fact that the Respondent has not filed a Response, the Panel is in no position to make out its contentions.
6. Discussion and Findings
6.1 Effect of Respondentís Default
By paragraph 5(b)(i) of the Rules, it is expected of the Respondent to:
"[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain nameÖ"
In the event of a default, under paragraph (14)(b) of the Rules:
"Öthe Panel shall draw such inferences therefrom as it considers appropriate."
As stated by the panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddyís Antiques WIPO Case No. D2000-0004 :
"Respondentís failure to present any such evidence or to deny complainantís allegations allows an inference that the evidence would not have been favorable to respondent."
In the instant administrative proceeding, the Respondentís default entitles the Panel to conclude that the Respondent has no evidence to rebut the assertions of the Complainant.
6.2 Elements to be proven
However, paragraph 4(a) of the Policy envisages that for the Complaint to succeed, the Complainant must establish that:
i) the Respondentís Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights; and
ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
iii) the Respondentís Domain Name has been registered and is being used in bad faith.
The Panel in Cortefiel, S.A. v. Miguel Garcia Quintas WIPO Case No. D2000-0140 notes that under the Policy, even if the respondent is in default,
"Öthe complainant must prove that each of these three elements are present."
6.3 Identical or Confusingly Similar
The Disputed Domain Names <auto-nation.com> and <auto-nation.net> are identical to AutoNation, Inc.ís marks AUTONATION and <autonation.com>. The presence or absence of punctuation and the ".com" or ".net" are of no consequence when establishing the identity of marks. See WIPO Center Decision D2000-0059.("That Respondent has omitted the punctuation and spacing that appears in Complainantís mark from the domain name does not defeat this identity."; "The top level domain designators Ď.comí and Ď.netí simply function to indicate that the domain name owner purports to be a business.").
Further, the Disputed Domain Names <auto-nation.com> and <auto-nation.net> are confusingly similar to AutoNation, Inc.sí service marks AUTONATION DIRECT, AUTONATION USA, AUTONATION USA CAFE, <AUTONATIONDIRECT.COM>, <AUTONATION.COM> AND AUTONATION EXPRESS because "AUTONATION" is the primary component of each of these marks and the Domain Name(s).
6.4 Respondentís Rights or Legitimate Interests in the Disputed Domain Name(s)
Under paragraph 4(c) of the Policy, the Respondent may demonstrate its rights and interests in the said Disputed Domain Name(s) by showing:
i) its use of, or demonstrable preparations to use, the said Disputed Domain Name(s) or a name corresponding to the said Disputed Domain Name(s) in connection with a bona fide offering of goods or services before any notice to him of the dispute; or
ii) he (as an individual, business, or other organization) has been commonly known by the said Disputed Domain Name(s), even if he has acquired no trademark or service mark rights; or
iii) he is making a legitimate noncommercial or fair use of the said Disputed Domain Name(s), without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence presented by Respondent in demonstrating any of the foregoing factors because Respondent is in default and has failed to respond in this action. Accordingly, the evidence available contains nothing that may justify a legitimate noncommercial or fair use of the said Disputed Domain Name(s) by Respondent. Neither is there any evidence for any of the other two foregoing requirements.
Respondent's usage is clearly infringing of AutoNation, Inc.ís rights in the name and mark AUTONATION in connection with automobile related goods and services. Because Respondentís use of the Domain Name <auto-nation.com> is an infringing use of AutoNation, Inc.ís service mark, Respondent cannot have established any legitimate right or interest in the 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))." WIPO Center Decision D2000-0346.
6.5 Registration and Use in Bad Faith
As stated by the panel in World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001 in order for the Complainant to succeed:
"... the name must not only be registered in bad faith, but it must also be used in bad faith."
The Complainant must prove that the Respondent registered and also used the said Disputed Domain Name in bad faith in order to establish Ďbad faithí on the part of the Respondent.
From the foregoing facts, the Panel finds that Respondent had actual knowledge of Complainant's nationally famous name and mark, AUTONATION, at the time Respondent (and/or its predecessors) registered the Disputed Domain Names.
The Panel further finds that Respondent clearly intends to benefit from AutoNation, Inc.ís goodwill in its nationally famous 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." WIPO Center Decision D2000-0346 (citing WIPO Center Decisions D2000-0014 and D2000-0015). It is also both reasonable and likely to conclude that if Respondent is unable to use the <auto-nation.com> name it will begin to use the <auto-nation.net> name in its place to achieve the same wrongful objective of parasitzing the goodwill of AutoNationís trademark. In other words, Respondent registered and used the Domain Names "to attract, for commercial gain, Internet users to [its] website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location." Policy, Paragraph 4(b)(iv).
Based on the alleged facts, which have not been disputed, Complainant has established and the Panel finds that the Respondent has engaged in the practices defined in Paragraph 4(b)(iv) of the Policy as evidencing the registration and use of the said Disputed Domain Name in bad faith.
For all the foregoing reasons and pursuant to the ICANN Rules, paragraph (15), the Panel finds that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. The Panel requires that the said Disputed Domain Names, namely, <auto-nation.com> and <auto-nation.net>, be transferred to the Complainant pursuant to paragraph 4(i) of the Policy.
Terrell C. Birch
Dated: June 18, 2001
1. e-Possibility.com, Inc. subsequently changed its corporate name to Sticky Web, Inc. The entity Sticky Web, Inc. is also the successor by merger of the Perfect Web Corporation. (back to text)
2. Although previously separate legal entities, the registrant for <auto-nation.net> (The Perfect Web Corp.) and the registrant for <auto-nation.com> (e-Possibility.com, Inc.) have now merged into a single entity: Sticky Web, Inc. In fact, the two domains, <auto-nation.com> and <auto-nation.net> are housed on the same servers: NS1.THEUP-TICK.COM (188.8.131.52) and AIRFACE.COM (184.108.40.206). (back to text)
3. The Web page at <auto-nation.net> previously stated that <AUTONATION.NET> is "FOR SALE" and that interested bidders should "MAKE AN OFFER" by contacting Respondent, e-Possibility.com, at 411 East Atlantic Ave., Suite #6, Delray Beach, FL 33483. (back to text)