WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Carfax, Inc. D/B/A Carfax V. Setyo Djoenaedi & Associates
Case No. D2001-0986
1. The Parties
The Complainant is Carfax, Inc. d/b/a Carfax, a Pennsylvania corporation, having its principal place of business at 10304 Eaton Place, Fairfax, Virginia 22030, U.S.A.
The Respondent is Setyo Djoenaedi & Associates of Jl. Pandanaran 114, Semang, Jawa Tengah 50134, Indonesia. The Respondent appears to operate a business in California, and the address it provided for service is 300 Murchison Drive, Suite 215, Millbrae, CA, 94030, U.S.A.
2. The Domain Name(s) and Registrar(s)
The contested domain name is <lemon-check.com>.
The registrar is Network Solutions, Inc. of 505 Huntmar Drive, Herndon, Virginia 20170-5139, U.S.A.
3. Procedural History
The electronic version of the Complaint was filed on August 2, 2001. The hardcopy of the Complaint was received on August 3, 2001.
In accordance with Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy ("ICANN Rules") and Paragraph 5 of the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules"), the Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("ICANN Policy"), ICANN Rules and Supplemental Rules.
On August 9, 2001, the Center formally notified the Respondent of the Complaint and of the commencement of this administrative proceeding and sent copies to the Complainant, the Registrar and ICANN.
The Respondent filed an electronic version of the Response on August 30, 2001. The hardcopy of the Response was received on August 29, 2001.
On September 10, 2001, the parties were notified that Mr. Swinson had been appointed as the sole panelist and that a decision was to be handed down by September 24, 2001 (save exceptional circumstances).
On September 11, 2001, the WIPO Center received an unsolicited Reply to the Respondentís Response. Pursuant to Paragraph 10(d) of the ICANN Rules, "the Panel shall determine the admissibility, relevance, materiality and weight of the evidence". The Panel has decided that it is equitable to admit the Reply to the Respondentís Response as evidence. However, in the opinion of the Panel, the Reply to the Respondentís Response did not add anything of substance to the issues and facts set out in the Complaint and the Response, and as such, was not relied upon by the Panel.
The language of the proceeding is English.
The Panel is satisfied that the Complaint was filed in accordance with the requirements of the ICANN Rules and Supplemental Rules; payment was properly made; the Panel agrees with the Centerís assessment concerning the Complainantís compliance with the formal requirements; the Complaint was properly notified to the Respondent in accordance with paragraph 2(b) of the ICANN Rules; the Respondent filed a hardcopy of the Response within the timeframe set out in the ICANN Rules; the Administrative Panel was properly constituted.
4. Factual Background
The Complainant is the registered owner of U.S. Trademark Registration No. 2,409,610 (Filing Date July 7, 1999) for the word mark LEMON CHECK in class 42. The Complainant has applied for the registration of U.S. Trademark Serial No. 76/276,101 (Filing Date June 25, 2001) for the word mark LEMON CHECK also in class 42, but with a different description of services.
The Complainant registered the domain name <lemoncheck.com> on August 31, 1998. The Complainant is currently using the domain name <lemoncheck.com> for its Web site and electronic mail communications.
The Respondent registered the contested domain name on February 29, 2000.
5. Partiesí Contentions
The Complainantís submissions can be summarized as follows:
The Complainant is a leading and well-known provider of automobile information. Over the last seventeen years, the Complainant has provided vehicle information to automobile buyers and sellers, and developed an outstanding reputation in the industry. Since June 1, 1998, the Complainant has marketed, promoted, and used, the LEMON CHECK mark in connection with providing information services relating to motor vehicle records. In particular, the Complainant uses the mark in connection with providing information on an automobileís past history, including whether the automobile was repurchased by the manufacturer or used as a rental car.
The Complainant has spent considerable amounts of money, time and effort in securing, developing and making popular its Web sites and online services. The Complainant has also spent substantial amounts of time and money advertising the LEMON CHECK mark. As a result of the Complainantís extensive advertising and promotion of its LEMON CHECK services, the public associates the mark with the reputable and valuable services provided by the Complainant.
The Respondent participates in the Complainantís "Carfax Affiliate program." The Carfax Affiliate Agreement grants Affiliates a license to use the Complainantís LEMON CHECK mark on their Web sites. Under this Carfax Affiliate Agreement, Carfax agrees to pay the Affiliate a commission based upon net sales generated by customers who connect to Carfax through the Affiliateís Web site and purchase Carfax Vehicle History Reports or Report Packages. The Carfax Trademark Use Guidelines set out the manner in which Affiliates are permitted to use the Complainantís trademarks. (The Panel notes that the Complainant modified the Carfax Trademark Use Guidelines to provide Affiliate Program members with clear guidelines regarding the use of Carfaxís trademarks and notified the Respondent of the amendments on May 16, 2001.)
The contested domain name wholly incorporates and, but for a hyphen and the top-level domain designation (".com"), is identical to the Complainantís LEMON CHECK mark.
The circumstances surrounding the Respondentís registration and use of the contested domain name demonstrate that the Respondent has no legitimate rights or interest in the domain name. The Respondent cannot establish the applicability of any of the circumstances set out in Paragraph 4(c) of the ICANN Policy.
The Respondent registered and uses the contested domain name in bad faith as the Respondentís primary purpose of using Complainantís mark is to lure Internet traffic to its Web site featuring automobile sales information. The evidence of bad faith under Paragraph 4(b)(iv) is clear.
The Complainantís counsel sent the Respondent two cease and desist letters, via Federal Express overnight courier and e-mail on December 21, 2000, and May 16, 2001. The Respondent changed its Domain Name Registrant address from Fullerton, California to Samarang, Jawa Tengah (Indonesia) after receipt of Complainantís May 16, 2001.
The Respondentís submissions can be summarized as follows:
On or about March 1997, the Respondent registered and began using its initial Web site, <www.citimall.com>, which was an online "mall" of various products and services, including automotive products and services. In August 1998, the Respondent contacted the Complainant to see if the Complainant was interested in selling its service through the <www.citimall.com> Web site. Effective September 15, 1998, Setyo Djoenaedi, Inc. entered into a written agreement to sell CARFAX services. (The panel notes that the party to this agreement was not the Respondent, and that the agreement does not use the words "Lemon Check" at all.) At that time, neither the Complainant nor the Respondent was using the term "lemon check" to describe a product or service on any of their Web sites.
In September 1998, the Respondent thought of a service it could provide on its <www.citimall.com> Web site to supplement the services provided by Complainant. The Respondent thought of seeking out general new and used car "lemon" information and state laws covering "lemon" cars and put that information on its Web site. The Respondent referred to this new service as "lemon check". No similar service was being provided by anyone at that time, and definitely not by the Complainant. The Respondent ran an Internet search of the term "lemon-check" in September 1998, and found that no other Web site or domain name offered a "lemon-check" service by that name or by another name. Therefore, the Respondent was the first user of "lemon-check" as a service advertised to consumers, and the first user of the trade name in interstate and international commerce. The Respondent used this service name on its <www.citimall.com> Web site for a year and a half before registering a new domain name in its own right.
On February 29, 2000, the Respondent registered <www.lemon-check.com>. The "Lemon Check" service was very popular on the <www.citimall.com> Web site and needed to have its own domain name. As of February 2000, no similar service was being offered by the Complainant either as "lemon check" or "lemon-check" or by any other name. At that time, the Complainant was stating, and using, in text the words "lemon check", which then led to a link which led to a DMV record of transfers and salvage information for a car. This is a very different service from that which is offered by the Respondent, which is a link to state laws and legal referrals to assist an owner of a "lemon" car.
In 1999, when the Respondent originally sought legal advice on registering its service mark "lemon-check", he was told that it was a merely descriptive term not subject to registration.
The Respondent maintains that the Complainantís trademark is invalid for two reasons:
(a) Prior use in interstate commerce associated with a particular service by the Respondent, predating any commercial use by the Complainant; and
(b) The term "lemon-check" is not a registrable trademark since it is in common usage in the United States and is merely a descriptive term.
The Respondentís service is not similar to the service offered by the Complainant. The Respondentís mark is not similar to the logo trademarked by the Complainant.
The Respondent acquired the contested domain name exclusively for its own use for services that only it was providing at the time and which the Respondent is still providing. It was not obtained primarily to sell, rent or otherwise transfer.
The Respondent did not register the domain name in order to prevent the Complainant from registering it, and it was not registered to disrupt the Complainantís business. Both parties currently provide different services using similar domain names at this time. The Complainant still does not advertise or promote its "lemon check" domain name. The Complainant has never actually used "lemon-check" or "lemon check" as a domain name on a Web site; the term only appears on the CARFAX Web site.
6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the three elements set out in Paragraph 4(a) of the ICANN Policy, namely:
(a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) the respondent has no rights or legitimate interests in respect of the domain name; and
(c) the domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant.
The panel has carefully studied the Complainant's and the Respondent's submissions, evidence and cited decisions. The submissions were carefully prepared and well organized.
6.1 Identical or confusingly similar to a trademark or service mark
The panel must find that: (a) the Complainant has a trademark or service mark; and (b) that the contested domain name is identical or confusingly similar to that trademark or service mark.
The Complainant is the registered owner of the LEMON CHECK trademark in the United States.
The Respondent asserted that the Complainantís trademark is invalid. The panel has no jurisdiction to decide whether the Complainantís trademark registration is invalid.
The panelist, who resides in Australia, is aware of the Complainantís Lemon Check service. Even putting the panelistís own knowledge aside, and relying solely on the materials in the Complaint, the panel finds that, through the Complainantís use in commerce of LEMON CHECK, the Complainant has trademark rights in LEMON CHECK.
The panel concludes that the Complainant does have trademark rights in the name LEMON CHECK sufficient to satisfy Paragraph 4(a)(i) of the ICANN Policy. (See also Carfax, Inc. d/b/a Carfax v. Tony Falco WIPO Case No. D2001-0833, which came to a similar conclusion).
The only difference between the Complainantís trademark and the contested domain name is the addition of a hyphen and the suffix ".com". These are not distinguishing features and do not change the likelihood for confusion: Microsoft Corporation v. Amit Mehrotra WIPO Case No. D2000-0053; InfoSpace.com v. Tenenbaum Ofer, WIPO Case No. D2000-0075; Societe des Bains de Mer v. Worldnet Companies, Inc. WIPO Case No. D2000-1321; Minit Canada, Inc. v. Steve Clark Enterprises AF-0229b; Singapore Airlines Limited v. Hotel Price and Patricia de la Torre WIPO Case No. D2001-0595.
The Respondent asserted that its services are not similar to those offered by the Complainant. In relation to Paragraph 4(a)(i) of the ICANN Policy, that is irrelevant. As stated in Oshawa Centre Holdings Inc. v. M. Bharwani, eResolution Case No. AF-0820 (three panel decision):
"The purpose of this test is that the Complainant must prove that it has trademark rights in words similar to the disputed domain name and is not making a spurious claim. The Complainant does not have to prove that it would succeed in a trademark infringement case against the Respondent. It is also irrelevant under this test that the Respondent may be in another jurisdiction where the Complainant does not have trademark rights.
In short, it is not a requirement for the Complainant to prove that the Complainant has the exclusive rights to its trademark in relation to all types of goods and services in all countries in the world. There is no requirement that the Respondent is infringing or may infringe those trademark rights. For this test, it is irrelevant whether or not the Respondent knew of the Complainant's trademark."
As a result, the panel finds that the contested domain name is confusingly similar to the Complainantís trademark.
Under Paragraph 4(c) of the ICANN Policy, the Respondent may demonstrate its rights and interests in the contested domain name by showing any of the following circumstances, in particular but without limitation:
(i) its use of, or demonstrable preparations to use, the contested domain name or a name corresponding to the contested domain name in connection with a bona fide offering of goods or services before any notice to it of the dispute; or
(ii) it (as individuals, a business, or other organization) has been commonly known by the contested domain name, even if it has acquired no trademark or service mark rights; or
(iii) it is making a legitimate noncommercial or fair use of the contested domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In relation to Paragraphs 4(c)(i) and 4(c)(iii) of the ICANN Policy, the Complainant alleges that the Respondentís use of the contested domain name is not a bona fide offering of goods nor a legitimate noncommercial or fair use, because the Respondent is using the Complainantís mark to lure Internet traffic to the Respondentís Web site. The Complainant cited the decision in Big Dog Holding, Inc. v. Day FA093554 in support of this contention.
In relation to Paragraph 4(c)(i), the panel finds that the Respondent was using the contested domain name in connection with an offering of services before receiving any notice of the dispute. However, the panel finds that the Respondent was not using the contested domain name in connection with a bona fide offering of services in accordance with Paragraph 4(c)(i) of the ICANN Policy.
As stated in Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847, "use which intentionally trades on the fame of another cannot constitute a Ďbona fideí offering of goods or service. . . . to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."
The Respondent most likely knew of the Complainantís trademark rights and <lemoncheck.com> domain name at the time of registering the contested domain name. Moreover, the Respondent is offering services similar to the Complainantís services. The panel concludes that the Respondent registered the contested domain name in order to divert consumers to the Respondentís web site in a way that was misleading and illegitimate. As a result, the panel finds that the Respondentís offering of services is not a bona fide offering of services in accordance with Paragraph 4(c)(i) of the ICANN Policy.
The Respondent alleges that its services are not the same or similar to the Complainantís services. The panel disagrees, and finds that the services offered by the Respondent at the website using the disputed domain name are, in part, highly similar to the Complainantís services.
The Respondent alleges that it "thought of" the name "lemon check" in September 1998, and that no similar service was being provided by anyone else at that time, including by the Complainant. If the Respondent used the disputed domain name, or a common law trademark similar to the disputed domain name, before the Complainantís first use of the trademark it relies upon, then the Respondent most likely would have a legitimate interest in the disputed domain name. (Usually, the Respondent need only prove bona fide use of the disputed domain name prior to notice of the dispute. Based on how the Respondent currently uses the disputed domain name, the panel has found that the Respondentís use is not bona fide. However, the panel may reach a different conclusion on the issue of bona fides if the Respondent used the disputed domain name prior to the Complainantís first use of LEMON CHECK. That is why the panel is considering the issue of first use, rather than use prior to notification of the dispute.).
However, the Respondent provided no tangible evidence as to when it first used "lemon check". The earliest use for which the Respondent provided proof was the date of registration of the contested domain name (February 2000). The Complainant provides little tangible evidence of its first use of "lemon check". The Complainant filed for its "LEMON CHECK" trademark registration in July 1999, claiming a date of first use of June 1998. The Complainant registered its <lemoncheck.com> domain name in August 1998, but there is no evidence as to when the Complainant first used this domain name.
The evidence, although not conclusive, suggests that the Complainant used LEMON CHECK prior to the Respondent.
On this point, in relation to Paragraph 4(c) of the ICANN Policy, the onus of proof is on the Respondent. The Respondent has not provided any proof that it used the contested domain name or the words "lemon check" prior to the Complainantís date of first use as asserted in its trademark registration or the date of registration by the Complainant of the domain name <lemoncheck.com>.
In relation to Paragraph 4(c)(ii) of the ICANN Policy, the Complainant states that the Respondent is not commonly known by the contested domain name or the Complainantís trademark. The Complainant searched 17 international trademark registries and found no evidence that the Respondent has registered any trademarks related to the Complainantís trademark. The Respondent did not assert that it was commonly known by the contested domain name. The panel agrees with the Complainantís assertion that the Respondent is not commonly known by the contested domain name or the Complainantís trademark.
The panel finds that the Respondent is not making a legitimate noncommercial or fair use of the contested domain name in accordance with Paragraph 4(c)(iii) of the ICANN Policy. The Respondent did not assert that Paragraph 4(c)(iii) applied. The Respondentís use of the domain name is commercial use, and as discussed elsewhere in this decision, this use cannot be considered to be fair use.
As a result, the panel finds that the Respondent has no rights or legitimate interests in respect of the contested domain name.
The panel is not finding that parts of the Respondentís website are not bona fide or legitimate. The information provided at the Respondentís website about lemon laws is useful to consumers. However, it is not useful to consumers to use the Complainantís trademark as the domain name for the Respondentís website in the circumstances of this case.
The result of this dispute may have been different if the Respondent only provided information about lemon laws on its website, as a free community service. As discussed below in relation to bad faith, that is not the situation here.
6.3 Bad Faith
Paragraph 4(b) of the ICANN Policy states that any of the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the contested domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration 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 Respondentís documented out-of-pocket costs directly related to the contested domain name; or
(ii) the Respondent has registered the contested domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís 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 the Respondentís Web site or location or of a product or service on the Respondentís Web site or location.
There is no evidence to suggest that the Respondent registered or acquired the contested domain name for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant. There is no evidence to suggest that the Respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of a trademark or service mark from reflecting the mark in a corresponding domain name. As a result, the circumstances set out in Paragraphs 4(b)(i) or 4(b)(ii) of the ICANN Policy do not apply.
The Complainant did not allege that the Respondent registered the contested domain name primarily for the purpose of disrupting the business of a competitor. As a result, the panel will not consider this issue, as the panel has not been presented with enough evidence to decide whether the Respondent is a competitor of the Complainant.
The Complainant alleges that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís Web site, by creating a likelihood of confusion with the Complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Web site, or of a product or service on the Web site.
The Respondentís evidence reveals that Setyo Djoenaedi, Inc. entered into a Marketing Agreement with the Complainant prior to the date upon which the Respondent registered the contested domain name. (The Respondent has not provided any evidence of the relationship between the Respondent and Setyo Djoenaedi, Inc.) The marketing agreement is not relevant to the issue of bad faith in this dispute.
The Complainant registered the <lemoncheck.com> domain name prior to the date upon which Setyo Djoenaedi, Inc. and the Complainant entered into the Marketing Agreement. The Complainant registered the words LEMON CHECK as a trademark in the United States prior to the date upon which the Respondent registered the contested domain name. As a result, the panel concludes that the Respondent would have been aware of the existence of Complainant and the Complainantís registration of the <lemoncheck.com> domain name and the LEMON CHECK trademark prior to registering the contested domain name.
Based on a review of all the materials and the <lemon-check.com> website, the panel concludes that the Respondent has attempted to attract, for commercial gain, Internet users to the Respondentís website by creating a likelihood of confusion with the Complainantís trademark.
The Respondent is a sophisticated Internet user. The panel notes that an individual, Setyo Djoenaedi, is listed as the administrative and billing contacts for the contested domain name. Setyo Djoenaedi is listed on the citimall.com website as its President and as having an MBA from The California State University.
The contested domain name resolves to a web site that is titled "LEMON CHECK" and which contains, amongst other things, a prominent link to the Complainantís web site. When an Internet user clicks on that link, part of the Complainantís web site (the Complainantís Lemon Check service) is displayed in what appears to be a frame on the Respondentís web site under the Respondentís banner and advertising. The panel finds that this apparent framing of part of the Complainantís web site within the Respondentís web site, along with use by the Respondent of the dispute domain name and naming the website "LEMON CHECK," is likely to cause confusion as to the source, sponsorship, affiliation or endorsement of that part of the Respondentís web site.
The most difficult aspect of this dispute involves the Complainantís affiliate program. Unfortunately, the Respondent did not make any submissions regarding its participation in this program. According to the Complainantís evidence and submissions, the Respondent was a marketing affiliate of the Complainant. As such, the Respondent has a license from the Complainant to use the words "LEMON CHECK." It would appear, but is not totally clear, that the Respondent was licensed to use "LEMON CHECK" prior to it registering the disputed domain name. The license incorporates "Trademark Use Guidelines" that prevented the Respondent from using LEMON CHECK in any domain name. As stated above, the Trademark Use Guidelines were amended and it is not clear if this prohibition existed when the Respondent registered the disputed domain name. Also, the trademark license is, on one view, not conditional upon the Respondent complying with Trademark Use Guidelines.
The Respondent may have argued, but did not, that its use of the disputed domain name was licensed by the Complainant, and therefore not used in bad faith. The panel will not consider whether this submission, if the Respondent had made it, would be successful.
Generally, in relation to affiliate programs, the panel is aware of World Wrestling Federation Entertainment, Inc. v. Aaron Rif, WIPO Case No. D2000-1499, which was relied upon by the Complainant. The Complainant suggested that the Respondent is in breach of the Carfax Affiliate Agreement, and that this is also evidence of use of the domain name in bad faith.
Due to the insufficiency of the evidence and submissions in relation to the Carfax affiliate program, the panel will not consider this aspect of the dispute in further detail, and places no reliance upon the affiliate program in reaching this decision.
The panel also notes that the meta-tags on the website that operated under the disputed domain name currently include terms that are trademarks or brand names of others, such as "Kelley" and "Blue Book". The panel does not need to rely upon this to reach the conclusion in this case.
Overall, the panel finds that the Complainant has provided sufficient evidence to satisfy Paragraph 4(b)(iv) of the ICANN Policy.
Accordingly, the panel finds that the Complainant has established the element set out in Paragraph 4(a)(iii) of the ICANN Policy.
6.4 Reverse Domain Name Hijacking
The Respondent requested the panel to make a finding of reverse domain name hijacking by the Complainant. However, the Respondent has provided no grounds for this request. The only possible bad faith on the part of the Complainant is that it did not disclose in its Complaint the Marketing Agreement entered into between the Complainant and Setyo Djoenaedi, Inc. on September 15, 1998. The Complainantís representative may not have disclosed this agreement on the basis that it was honestly believed it not to be relevant, rather than with any bad faith motive. As the Complainant has succeeded in this dispute, the panel cannot find that this is a case of reverse domain name hijacking.
For the reasons set forth above and pursuant to Paragraph 4(i) of the ICANN Policy and 14 of the ICANN Rules, the Panel orders that the contested domain name <lemon-check.com> be transferred to the Complainant.
Dated: September 24, 2001