WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Carfax, Inc. v. COMn.COM

Case No. D2002-0513

 

1. The Parties

1.1. The Complainant in this administrative proceeding is Carfax, Inc. d/b/a Carfax, 10304, Eaton Place, Fairfax, Virginia 22030, United States of America.

1.2. The Respondent in this administrative proceeding is COMn.COM, 63-51, Beomeo 4-dong, Suseong-gu, Taegu, Republic of Korea.

 

2. The Domain Name and Registrar

The Domain Name is <carfax.net> and is registered with Netpia.com, Inc.

 

3. Procedural History

3.1. Complaint was submitted to the WIPO Arbitration and Mediation Center (the "Center") by email on May 31, 2002, and in hard copy on June 3, 2002.

3.2. An acknowledgement of the receipt of the Complaint was sent to the Complainant on June 4, 2002.

3.3. A request for registrar verification was sent to the Registrar, Netpia.com, Inc. on June 4, 2002, requesting it to inter alia confirm that a copy of the Complaint had been received by them; confirm that the Domain Name in issue is registered with them, etc. The Registrarís confirmation letter was received by the Center on June 5, 2002.

3.4. As the Complaint was filed in English, on June 7, 2002, the Center sent an email to the Complainant asking them to file a translated Complaint in Korean pursuant to Paragraph 11 of the Uniform Domain Name Dispute Resolution Policy (the "Policy") and in the absence of an agreement between the parties or unless specified otherwise in the registration agreement the language of the administrative proceeding shall be language of the registration agreement, that is Korean. The Complainant was requested to:

(i) provide satisfactory evidence of an agreement between the Complainant and the Respondent to the effect that the proceeding should be in English;

(ii) submit a translated version of the Complaint in Korean.

3.5. On June 24, 2002, the Complainant filed a translated Complaint by email and a hard copy on June 25, 2002.

3.6. On June 27, 2002, the Center was satisfied with the formal requirements of the Policy, the Rules for the Uniform Domain Name Dispute Resolution Policy (the "Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel independently agrees with the assessment of the Center in this regard. The Complainant also paid on time and in the required amount the fees for three Panelists.

3.7. No formal deficiencies having being recorded, on June 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, Registrar and ICANN).

3.8. Having reviewed the communications records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under Paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

3.9. On July 13, 2002, the Center received an email from the Respondent with the Response in Korean as an attachment and a hard copy of the Response on July 16, 2002.

3.10. On July 16, 2002, the Center acknowledged receipt of the Response by email and the hard copy.

3.11. On July 24, 2002, the Center notified the appointment of the Panelists to the Complainant and the Respondent.

3.12. On August 9, 2002, the Center notified the appointment of the Administrative Panel and the projected date for the decision to be August 23, 2002.

3.13. On August 29, 2002, the Panelists notified the Center their preliminary ruling pursuant to paragraph 11 of the policy that the language of the administrative proceeding shall be English, and issued a Procedural Order, granting the Respondent an opportunity to submit a translated copy of the Response in English.

 

4. Factual Background

4.1. Complainant has used its CARFAX Mark since at least as early as October 10, 1984.

4.2. Complainant is a leading and well-known provider of automobile information. Throughout the last seventeen years, Complainant has provided vehicle information to automobile buyers and sellers, and developed an outstanding reputation in the industry. Since at least as early as October 10, 1984, Complainant has marketed, promoted, and used, the CARFAX Mark in connection with providing information services relating to motor vehicle records. For example, Complainant uses the Marks in connection with providing information on an automobileís past history.

4.3. Complainant is the owner of U.S. Registration No. 1,589,438 for CARFAX, which has attained incontestable status, and U.S. Registration No. 2463326 for CARFAX.COM. The CARFAX and CARFAX.COM Marks, and the goodwill associated therewith, are of incalculable value to Complainant.

4.4. As part of its marketing and commercial activities, Complainant has developed and extensively uses its Marks in connection with Complainantís Website located at "carfax.com." Complainant also is the registrant of the domain name <carfax.org>. Complainant has spent considerable amounts of money, time and effort in securing, developing and promoting its Website. Complainant has also spent substantial amounts of time and money advertising the CARFAX and CARFAX.COM Marks. As a result of Complainantís extensive advertising and promotion of the CARFAX and CARFAX.COM Marks, the public associates the Marks with the reputable and valuable services provided by Complainant.

4.5. Complainant actively protects its rights in the CARFAX and CARFAX.COM Marks. Complainant routinely monitors the Internet for impermissible uses of its Marks, sends cease and desist letters to companies and individuals, like Respondent, who are wrongfully using the Marks, and actively enforces its rights against those who continue to infringe Complainantís rights. Complainant also protects its rights to the mark by filing UDRP Complaints and obtaining Panel orders transferring domains, which incorporate Complainantís marks.

4.6. Respondent uses the Domain Name and Complainantís Marks in connection with a commercial Internet Website located at "www.forwards.com." Upon accessing the Web address "www.carfax.net", visitors are bombarded by Respondent with numerous "pop-up" advertisements contained in separate Windows dialog boxes and are displayed the contents of Respondentís "www.forwards.com" website under the pop-up advertisements. The pop-up advertisements that appear when accessing "www.carfax.net", however, do not appear when directly accessing Respondentís site located at "www.forwards.com."

4.7. The impugned Domain Name wholly incorporates Complainantís CARFAX and CARFAX.COM marks.

4.8. The only factual difference between the Domain Name and Complainantís Marks is Respondentís appending the Ď.netí top-level domain to Complainantís CARFAX Mark and substituting same for the Ď.comí portion of Complainantís CARFAX.COM Mark.

4.9. Respondent registered the Domain Name on November 13, 2000 without Complainantís permission, license or consent.

4.10. Respondent has not registered the CARFAX Mark as a Korean trademark.

4.11. There is no contractual relationship between Complainant and Respondent, and Respondent is not participating in Complainantís Affiliate Program.

4.12. Complainantís adoption and use of its CARFAX Mark precede Respondentís registration of the Domain Name by over sixteen years.

4.13. Complainantís use of its CARFAX.COM Mark as a Website domain precedes Respondentís registration of the Domain Name by over three years.

 

5. Parties Contentions

A. Complainant has raised the following contentions:

Identical or Confusing Similarity

5.1. The impugned Domain Name <carfax.net> is identical or confusingly similar to the Complainantís trademark "CARFAX." The Complainant has incontestable rights due to registration in the United States of America and due to long and extensive use the Complainant has gained common law rights over the trademark "CARFAX."

Rights/ Legitimate interest

5.2. The mark CARFAX refers to and is distinctive of the Complainant and of none other. Neither does the Respondent use the impugned Domain Name to offer bona fide goods or services nor is he known by the said name.

Bad Faith

5.3. The Domain Name <carfax.net> incorporates a well-known mark, belonging to the Complainant. Its very use by someone with no connection with the product or services suggests opportunistic bad faith. The Complainant relies upon Tuxedos By Rose v. Nunez FA95248, and Ty Inc v. Joseph Parvin, WIPO Case No. D2000-0688.

5.4. The acts and conduct of the Respondent are calculated to deceive or mislead the trade and public into believing that the impugned Domain Name is that of the Complainant or is otherwise associated or connected with the Complainant.

5.5. The acts of the Respondent have deprived the Complainant of the right and the opportunity of having a Domain Name comprising its own trademark.

5.6. The Respondentís action in activating a website under the impugned Domain Name and intentionally attempting to attract, for commercial gain, Internet users to a website by creating confusion as to the source, sponsorship, affiliation or endorsement of the website or the products and services on the website.

B. Respondent has raised the following contentions:

5.7. The Respondent in the summary Response submitted that the Complainantís trademark is not globally registered and that the Complainant could have registered <carfax.net> when they registered <carfax.com>. The Respondent also submitted that the Domain Name was left unused for two years.

5.8. The Respondent submitted that the mark Carfax is not identifiable with the Complainantís trademark. It is simply a combination of generic words "car" and "fax." The Respondent also submitted that no affiliation or contract could have existed between the Respondent and the Complainant, as the Respondent never knew the Complainant before.

5.9. The Respondent has a specific plan to use the <carfax.net> domain name for his Internet business purposes, but has forwarded it to another website "www.forwards.com" in the mean time for its preparation. This is not an advertising website to attract users away from the Complainant.

 

6. Discussion and Findings

Language of Proceeding

6.1. Having regard to the circumstances of the administrative proceeding at hand, whereby the majority of the Panel has good command over the English language only [1], the Panel has determined that the language of the administrative proceeding shall be English and has notified the Center a preliminary ruling pursuant to Paragraph 11 of the Policy.

Burden of Proof

6.2. Paragraph 4(a) of the Policy requires the Complainant to prove the following:

● that the domain name registered by the Respondent is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and

● that the Respondent has no legitimate interests in respect of the domain name; and

● that the domain name has been registered and is being used in bad faith.

Each of these requirements will be dealt with separately.

Identical or Confusingly Similar

6.3. Complainant has used the trademark CARFAX, whether registered or otherwise, since 1984. The disputed Domain Name is <carfax.net>, of which the gTLD identifier or equivalent would be an inevitable component and is of no consequence in the determination of whether there is confusing similarity. The impugned Domain Name is therefore identical to a trademark of the Complainant.

Rights or Legitimate Interests

6.4. Complainant must establish that it has rights or legitimate interests in respect of the disputed Domain Name and that the Respondent does not. Complainant has produced search records to prove that its trademark CARFAX was registered at the USPTO on March 27, 1990, having been filed on November 5, 1987, and showing dates of first use as October 9, 1984, and first use in commerce as January 10, 1985. Similarly the trademark CARFAX.COM has a registration date of June 26, 2001, and was filed on July 22, 1999, with first use in commerce dated July 1, 1997. Complainant certifies that is has never granted any rights to use its trademarks to Respondent or entered into any relationship with Respondent.

6.5. There is no evidence that Respondent has used or made demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name for any bona fide purpose within the meaning of Paragraphs 4(c)(i) of the Policy. The use of Complainant's trademark to refer visitors to Respondent's own website is not bona fide.

6.6. Complainant's use of its trademark CARFAX predates by some sixteen years the Respondent's November 13, 2000 registration of the Domain Name <carfax.net> embodying solely that trademark. Complainant has used its trademark in a legitimate Domain Name <carfax.com> for five years, commencing more than three years prior to registration of the disputed Domain Name by Respondent. There is no evidence pursuant to Paragraph 4(c)(ii) of the Policy showing that Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, irrespective of Respondent holding no such trademark, and he refers only to an intention to activate it for different purposes in the future.

6.7. Since according to the evidence the Respondent is using the Domain Name for commercial purposes, there can be no claim that he is making a legitimate non-commercial use of it in the terms of Paragraph 4(c)(iii) of the Policy.

Bad Faith

6.8. Paragraph 4(a)(iii) of the Policy requires the Complainant to prove that the Domain Name has been registered and is being used in bad faith. The Policy provides four alternative circumstances in Paragraphs 4(b)(i), (ii), (iii) and (iv) that, without limitation, shall be evidence of bad faith. Paragraph 4(b)(iv) is particularly pertinent to the present Proceeding.

6.9. Paragraph 4(b)(iv) of the Policy provides for a finding of bad faith where "by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location."

6.10. Evidence produced by Complainant demonstrates that the disputed Domain Name was in use, since it resolved to or was linked to another active site. Internet users who had searched for or typed the Complainantís well-known trademark and who were caused to visit <carfax.net> were shown a succession of "pop-up" advertisements obviously intended to attract users to the providers of a selection of goods or services. The content of the destination websites is not an issue since it is the diversion itself by confusion that is evidence of bad faith (Bass Hotels & Resorts, Inc. v. Mike Rodgerall, WIPO Case No. D2000-0568). The only conceivable explanation for Respondentís choice of the disputed Domain Name was to attract Internet users intentionally through their confusion with Complainantís famous and long established trademark, to Respondentís ultimate commercial benefit. The Panel finds bad faith proven in the terms of Paragraph 4(b)(iv) of the Policy.

6.11. Aggravating factors of bad faith are found in terms of other provisions of Paragraph 4(b) of the Policy. Paragraph 4(b)(i) recognizes bad faith where a Respondent has acquired the Domain Name primarily to sell it for a profit. The headline appearing on Respondentís website: "Contact us if you are interested in the above domain", having regard to its placement and all the circumstances, undoubtedly invites offers to buy the Domain Name and demonstrates Respondentís intention to sell it for a profit.

6.12. Complainant has used its trademark CARFAX since 1984 and in 1997 registered the trademark CARFAX.COM, thereby placing on public record its commitment to an Internet presence. Respondent according to the evidence (Complainant Annex 25) has linked about 264 Domain Names to the same ultimate address to which <carfax.net> resolves. Respondent as the guiding mind behind a sophisticated, complex, large scale and fully international Internet-based operation can reasonably be expected to have had actual or constructive knowledge of the trademark status of the name CARFAX and its legitimate use in Complainantís Domain Name at the time of incorporating it into Respondentís Domain Name, particularly since the trademark is a distinctive non-dictionary creation. As held in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, appropriation of a well-known trademark of which Respondent had actual or constructive knowledge is of itself sufficient to constitute bad faith registration. The Panel finds bad faith proven in these terms.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the Domain Name registered by the Respondent is identical and confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name at issue, and that the Respondentís Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the impugned Domain Name be transferred to the Complainant.

 


 

Mr. Pravin Anand
Presiding Panelist

Dr. Clive N.A.Trotman
Panelist

Ms. Boh Young Hwang
Panelist

Dated: September 18, 2002

 


Footnote:

1. Telcel, C.A. v. jerm and Jhonattan Ramirez, WIPO Case No. D2002-0309; Van Gogh Museum Enterprises BV and Stichting Van Gogh Museum v. M. Ohannessian, WIPO Case No. D2001-0879.