WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AutoScout24 Deutschland GmbH. v. Mark Marchese
Case No. D2005-0777
1. The Parties
The Complainant is AutoScout24 Deutschland GmbH., Munich, Germany, represented by Harmsen Utescher, Germany.
The Respondent is Mark Marchese, Spring Hill, Florida, United States of America.
2. The Domain Name and Registrar
The disputed domain name <autoscout24-dealers.com> is registered with Intercosmos Media Group, Inc. d/b/a directNIC.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 20, 2005. On July 20, 2005, the Center transmitted by email to Intercosmos Media Group, Inc. d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On July 20, 2005, Intercosmos Media Group, Inc. d/b/a directNIC.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for the Response was August 16, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 18, 2005.
The Center appointed Adam Taylor as the sole panelist in this matter on August 25, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant operates an international online marketplace for second-hand motor vehicles called “AutoScout24” and is part of a group of companies known as “Scout24”. The group also operates other marketplace websites under names such as “ImmobilienScout24”, “JobScout24”, “FinanceScout24”, “FriendScout24”, and “TravelScout24”.
The Complainant owns a number of registered community trademarks in class 38 including Community Trade Mark 1202670 filed June 10, 1999, for the words “AUTO SCOUT 24” and Community Trade Marks 1547512 and 1547533 both filed March 9, 2000, for logos including the words “AUTO SCOUT 24”.
The Respondent registered the disputed domain name on July 2, 2005.
As of July 13, 2005, the domain name resolved to a website branded “Autoscout24 Dealers” and included a logo similar to the Complainant’s Community Trade Mark 1547533. The following strapline appeared in the header: “Scout24 + Finance Scout24 + Friend Scout24 + Immobilllien (sic) Scout24 + Job Scout24 + Travel Scout24”. The site stated: “Welcome to Autoscout24 Dealers program! This is a program was started to protect and simplify the international Auto and Moto deals. With the Dealers Program, Autoscout24 helps buyers and dealers to reduce delivery time, shipping costs and risks. Here Autoscout24 acts like a third neutral patry (sic), gives legal advices and keep the vehicles and payments under Autoscout24 custody…”. The message is signed “Autoscout24 team”. The site goes on to describe the “Dealers Program” in terms of a form of escrow service whereby “Autoscout24” allegedly receives and holds the vehicle purchase price pending delivery to and inspection by the buyer. The “About Us” page includes the correct name and address of the Complainant.
5. Parties’ Contentions
Identical or Confusingly Similar
The distinctive components of the disputed domain name <www.autoscout24-dealers.com> are identical to those of the Complainant’s AUTOSCOUT24 trademarks. The component “dealers” is purely descriptive in that it indicates that goods are traded under this domain.
The Respondent’s website imitates the layout of the Complainant’s website, uses the Complainant’s trademarks and identifies the Complainant as the party responsible for the content of the website. The impression is created that the Respondent’s website is operated by car dealers doing business in the marketplaces belonging to the Complainant whereas the Complainant does not own any sites which are directed to its trade customers.
A substantial risk of confusion also arises from the similarity of the Complainant’s services and those offered under the disputed domain name.
Rights or Legitimate Interests
The Respondent has no legitimate interest in the disputed domain name. The offer provided via the disputed domain name alone shows that the Respondent is merely intending to profit from the Complainant’s reputation. This is additionally evidenced by the layout of the website linked to the disputed domain name which is identical to that of the Complainant’s website. The construction and colouring of the two are identical. In addition, the trademarks of the Complainant or the companies with which it is related within the “Scout24” Group are used in identical form in the scope of the offer under the disputed domain name.
The Respondent is attempting to profit from the Complainant’s good reputation and/or exploit same for its own benefit. The Complainant is aware of some cases where the Respondent has fraudulently taken cash from consumers for the services offered in the Complainant’s name via the disputed domain name but without these services ever having been provided.
The disputed domain name was registered exclusively with the aim of conducting fraudulent activities in the Complainant’s name.
Registered and Used in Bad Faith
The disputed domain name was registered by the Respondent to exploit the Complainant’s good reputation.
As stated above, the Complainant knows of cases where the Respondent has received cash from users for the services offered in the name of the Complainant but without providing those services.
The Respondent has infringed the Complainant’s trademark rights by reference to the Complainant in the website linked to the disputed domain name even though no business relationship exists between the parties.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established registered trademark rights in the term AUTOSCOUT24.
The disputed domain name includes the Complainant’s trademark in its entirety together with the generic word “dealers”. This additional generic term fails to dispel the connection between the domain name and the trademark. Indeed, it reinforces the link given the obvious connection between the word “dealers” and the Complainant’s services in connection with an online marketplace for used vehicles. See, e.g., Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 (February 13, 2003) (<discount-marlboro-cigarettes.com>).
It is well established that domain suffixes are disregarded for the purpose of this comparison.
The disputed domain name is therefore confusingly similar to the Complainant’s AUTOSCOUT24 trademark.
In accordance with the approach generally taken under the Policy, and notwithstanding the Complainant’s submissions, the Panel has reached this conclusion based on a comparison of the domain name and the trademark and without reference to the Respondent’s website. The content of the website, however, is relevant to the discussion below.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of rights or legitimate interests in a domain name: (i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services; (ii) the fact that a respondent has commonly been known by a domain name; and (iii) legitimate non-commercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
The Complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070 (March 24, 2003).
The Complainant has not licensed or otherwise authorized the Respondent to use its trademark.
As to paragraphs 4(c)(i) and (iii), the Panel has concluded below that the Complainant used the disputed domain name to profit by creating a likelihood of confusion with the Complainant’s trademark. In these circumstances the Respondent’s offering could not be said to be bona fide nor could it be said to be legitimate non-commercial or fair use.
As to paragraph 4(c)(ii), there is no evidence that the Respondent has ever been commonly known by the disputed domain name.
The Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Respondent has not only copied the getup of the Complainant’s website including the logo and other trademarks of the Complainant and its group, it has also used the Complainant’s exact name and address on the “About Us” page of the website at the disputed domain name. The Respondent clearly intended to impersonate the Complainant.
The Panel has no evidence in support of the Complainant’s assertion that the Respondent actually took money from Internet users in return for services that were never provided. The Panel is, however, satisfied that the Respondent registered and used the disputed domain name for commercial gain and for the purpose of misleading internet users by encouraging them to visit the site connected to the domain name in the belief that it was connected with the Complainant.
Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith in accordance with paragraph 4(b)(iv) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <autoscout24-dealers.com> be transferred to the Complainant.
Dated: September 5, 2005