WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Manheim Auctions Inc. v. Whois ID Theft Protection
Case No. D2006-1044
1. The Parties
The Complainant is Manheim Auctions Inc., Atlanta, Georgia, United States of America, represented by Dow Lohnes, PLLC United States of America.
The Respondent is Whois ID Theft Protection, West Bay, Grand Cayman GT, Cayman Islands, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed Domain Name <manheimauction.com> is registered with Dotster, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2006. On August 18, 2006, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Name at issue. On August 18, 2006, Dotster, Inc. 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 August 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 11, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 13, 2006.
The Center appointed Luca Barbero as the Sole Panelist in this matter on September 20, 2006. 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 is the owner of several trademark registrations comprising the sign MANHEIM, including the federal registration in the United States of America for MANHEIM AUCTIONS No. 1,699,332 of July 7, 1992, in class 35 for Automobile auction services.
The Respondent registered the domain name <manheimauction.com> on May 4, 2001.
5. Parties’ Contentions
The Complainant asserts that Manheim Auctions Inc. is the largest wholesale automobile auction company in the world. Complainant operates more than 115 auction facilities worldwide, which feature the remarketing of vehicles for wholesale consignors. These sellers include car dealers, manufacturers, rental car operators, fleet/lease companies and financial institutions, and the buyers of the vehicles are licensed franchise and independent auto dealers. Complainant states that the auto auctions are promoted locally through conventional advertising, and also nationally and internationally via Internet websites such as “www.manheim.com” and “www.manheimauctions.com”.
The Complainant states that it has well-established rights in the registered MANHEIM AUCTIONS mark and common law rights on MANHEIM trademark, and that these signs are distinctive of Complainant’s services and are associated exclusively with Complainant.
The Complainant currently owns eight active U.S. federal registrations for trademarks that incorporate “MANHEIM” including MANHEIM AUCTIONS registration No. 1,699,332 of July 7, 1992, in class 35 for Automobile auction services. The Complainant has provided the Panel with copies of the registration certificates of the trademarks referenced in the complaint.
According to the Complainant, both registered and unregistered trademarks are entitled to protection under paragraph 4(a)(1) of the Policy and common law trademark rights can be established by demonstrating continuous use of a trademark over an extended period of time.
The Complainant has also registered numerous second-level domain names incorporating the MANHEIM trademark, including the following domain names: <manheim.com>, <manheim.net>, <manheimonline.com>, <manheimauctions.com>, <manheimautoauctions.com>, <manheimautoauctions.org>, <manheimautoauctions.net>, <manheimauctions.org>, and <manheimauctions.net>.
The Complainant highlights that a substantial amount of time and resources were invested to promote and advertise the MANHEIM trademarks, the MANHEIM domain names and their associated products and services. As a result, the Complainant states that it has developed extremely valuable goodwill and an outstanding reputation in the MANHEIM trademarks. The Complainant alleges that MANHEIM trademarks are undeniably famous and are an indication of high quality.
The Complainant contends that the disputed domain name <manheimauction.com> is confusingly similar to the registered MANHEIM AUCTIONS trademark as the Respondent has eliminated only a single letter from the trademark.
Furthermore, the Complainant contends that the disputed domain name <manheimauction.com> is identical to the MANHEIM trademark since the word “auction” simply describes the services that the Complainant provides in connection with its MANHEIM Trademark.
With reference to rights or legitimate interests in the disputed domain name, the Complainant states that the Respondent has no rights or legitimate interests in or to the Domain Name, and has never been authorized by the Complainant to use the MANHEIM AUCTIONS trademark.
The Complainant indicates that the Respondent is not a licensee and therefore the burden of proof on the issue of rights or legitimate interests is shifted to the Respondent.
The Complainant states that the Respondent has not made use of, or demonstrable preparations to use, the Domain Name in connection with a bona fide offering of goods or services, and thus cannot satisfy paragraph 4(c)(i) of the Policy. To the contrary, since the time that Complainant has been aware of Respondent’s registration for the Domain Name, the Respondent has used the Domain Name with a sponsored links site to direct visitors to various third party commercial websites. Such use does not constitute a legitimate, non-commercial use of the Domain Name under the Policy.
The Complainant concludes with reference to the issue of the rights or legitimate interest that the Respondent cannot establish rights in the Domain Name under Paragraph 4(c)(ii) of the Policy because the Respondent is not commonly known by the Domain Name and has not acquired trademark or service mark rights in the Domain Name.
With reference to the circumstances evidencing bad faith, the Complainant alleges that the true identity of the Respondent is Modern Limited – Grand Cayman Development, a company notorious for abusive domain name registrations. The previous name under which Respondent registered the Domain Name, <manheimauction.com>, is identical in format to Modern Limited’s well-known use of the domain identifier as the name of the registrant in the WHOIS information for domain names registered by Modern Limited. Although the WHOIS information for the Domain Name now lists “Whois ID Theft Protection” as the name of the Registrant, the Complainant states it is clear that the “Whois ID Theft Protection” is not the accurate name of the Respondent.
Moreover, the Complainant contends that the identical nature of the website to which the Domain Name resolves indicates that the true registrant of the Domain Name has remained unchanged. The Complainant therefore states that the true identity of the Respondent remains General Delivery, Georgetown, Grand Cayman, GT, KY, which is the alter ego of Modern Limited. The Complainant informs the Panel that numerous UDRP decisions have noted that Modern Limited and respondents using a domain name identifier as the name of the respondent, are one and the same entity.
The Complainant indicates that the Respondent has engaged in a pattern of registering domain names that incorporate famous or well-known trademarks or company names, and has been the subject of more than thirty UDRP proceedings in which the Panels ordered transfers of the disputed domain name. The Complainant states that this pattern of abusive registrations –reinforces its assumption that the Respondent’s registration of the Domain Name was done in bad faith under Paragraph 4(b)(ii) of the Policy.
The Complainant underlines that the Respondent is also intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s MANHEIM AUCTIONS trademark as to the source, sponsorship, affiliation, or endorsement of its website and of the products and services advertised on its website. The Respondent’s use of the Domain Name to misdirect potential visitors from the Complainant’s website to Respondent’s commercial website and to other third party commercial websites, for which Respondent presumably receives compensation, shows that the Respondent registered the Domain Name to deceptively attract and then misdirect Internet users for Respondent’s own commercial gain.
According to the Complainant, these circumstances are evidence of the Respondent’s registration and use of the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions and is in default.
Therefore, the Panel shall decide this proceeding on the basis of the Complainant’s submissions, drawing such inferences from the Respondent’s default that are considered appropriate according to paragraph 14(b) of the Rules.
6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A panel shall decide a Complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain name has been registered and is being used in bad faith.
A. Domain Name is Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations consisting in or comprising MANHEIM such as the U.S. trademark No. 1699332 MANHEIM AUCTIONS registered since July 7, 1992 in class 35 for automobile auction services.
In comparing the Complainant’s marks to the Domain Name < manheimauction.com> it should be taken into account that the suffix, must be excluded from consideration as being merely a functional component of a domain name. See, e.g., Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429, “the specific top level of the domain name such as ‘.net’ or ‘.com’ does not affect the domain name for the purpose of determining whether it is identical or confusingly similar”; Chevy Chase Bank, F.S.B. v. Peter Ojo, WIPO Case No. D2000-1770, “the accused domain name chevychasebank.org is legally identical to Complainant’s trade name CHEVY CHASE BANK”) and Ferrari S.p.A. v. Allen Ginsberg, WIPO Case No. D2002-0033, “the domain name maserati.org is not only confusingly similar to, but indeed practically identical with, the registered trademark MASERATI, notwithstanding the added gTLD .org”.
The Panel finds that the Domain Name is confusingly similar to the registered trademarks owned by the Complainant since the Respondent has eliminated a single letter from the trademark which is certainly not sufficient to exclude confusing similarity. The same reasoning was used in Delta Air Lines, Inc. v. Stonybrook Investments, Ltd., WIPO Case No. D2000-1686, where the deletion of the letter ‘s’ in the domain name <deltaairline.com> was found not to alter the confusing similarity between the domain name and complainant’s DELTA AIR LINES marks, and in Hershey Foods Corporation and Hershey Chocolate & Confectionery Corporation v. DRP Services, WIPO Case No. D2003-0841, where the deletion of the letter ‘s’ in the domain name <hersheychocolateworld.com> was found confusingly similar to complainant’s <hersheyschocolateworld.com> domain name.
In light of the above, the Panel deems that it is not necessary to consider the relevance of the Complainant’s non registered trademarks in this dispute.
The Panel finds that the Complainant has therefore proven that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made 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 prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
By not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name.
There is no relation, disclosed to the Panel, between the Respondent and the Complainant and the Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks and name under any circumstance. See, e.g., Nilfisk-Advance A/S v. Leong Tak Lang, WIPO Case No. D2000-1299, concluding that the respondent had no rights or legitimate interest in <nilfisk.net> because respondent is not an authorized agent or licensee of complainant, Guerlain S.A. v. SL Blancel Web, WIPO Case No. D2000-1191, noting that lack of authorization or license to use complainant’s marks contributed to a finding that complainant established prima facie evidence that respondent had no legitimate rights <missguerlain.com>.
The Panel also finds that the use of the disputed domain name merely to direct visitors to various third party commercial websites does not constitute a legitimate, non-commercial use of the Domain Name under the Policy.
See, e.g., Bayerische Motoren Werke AG v. (This Domain For Sale) Jonathan Investments, Inc., WIPO Case No. D2002-0787, where the panel found that the respondent’s use of the disputed domain name to resolve to a directory of commercial websites was not a bona fide offering of goods and services because “(a) the disputed domain name is fairly unique and specific to the Complainant; (b) there is no apparent connection between the disputed domain name and the Respondent’s website directory; and (c) there is no other apparent legitimate justification for the Respondent’s registration and use of the disputed domain name for its website”. Similarly, in Bilfinger Berger AG v. eService Finance Dept., WIPO Case No. D2003-0827, the Panel stated that “… although services are offered in the form of a directory, the services do not correspond to a bona fide offering by Respondent. The domain name <bilfinger.com> is only used as a link to a generic directory. . . there is no indication that the links contained on the website are related to the Respondent or to the BILFINGER name”.
As was also stated in The Paragon Gifts, Inc. v. Theparagoncatalog.Com c/o Whois Identity Shield, WIPO Case No. D2006-0820 “on the basis of … the un-contradicted assertions of the Complainant, it is reasonable to infer that no right or legitimate interest exists on the part of the Respondent and that the Respondent’s motives are not legitimate”.
In light of the foregoing, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, 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 the domain name in bad faith:
(i) circumstances indicating that the holder has registered or has acquired the 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 holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the 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 holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’ s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
With reference to the issue of bad faith at the time of the registration, the Panel concludes that in light of the mere difference of one letter between Complainant’s trademark and the Domain Name, the Respondent’s pattern of registering infringing domain names, –and the absence of any explanation from the Respondent on the rationale of the registration, that the Respondent was well aware of the existence of the trademark MAINHEIM AUCTIONS at the time of the registration of <mainheimauction.com> .
In accordance with a number of prior decisions issued under the Policy, the Panel agrees that actual knowledge of Complainant’s trademark at the time of the registration of the disputed domain name is to be considered an inference of bad faith. See, e.g., . Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000-0226.
Furthermore, in the absence of any effort by the Respondent to contradict the Complainant’s assertions and submissions, the Panel finds that the Complainant has provided sufficient evidence of the true identity of the Respondent hidden behind the shield of “Whois ID Theft Protection” that presently indicates the registered owner of the Domain Name.
The Panel finds paragraph 4(b)(ii) applicable in this case since the Respondent has registered the domain name in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has also registered other domain names incorporating registered trademarks that have been subject of more than thirty proceedings under the Policy.
The Panel concurs with the views expressed in Carte Blanche Greetings Limited v. metoyou, WIPO Case No. D2004-0946, where the panel stated that “it is clear that the Respondent is heavily involved in cybersquatting activities in relation to many domain names relating to well known names and trademarks. Such behavior corresponds to a pattern to register domain names identical to, or confusingly similar with, famous names and trademarks. This constitutes bad faith registration pursuant to Paragraph 4(b)(ii) of the Policy.”
Furthermore, in light of the mere one letter difference denoting singular or plural between the Domain Name registered by the Respondent and the Complainant’s registered trademark, there is clearly confusing similarity here. The Panel considers such activity a classic example of typosquatting. This conclusion was also reached in Allied Building Products Corp v. Alliedbuildingproducts.com c/o Whois Identity Shield, WIPO Case No. D2006-0833 (“it is therefore a reasonable inference from this that the Respondent knew of the Complainant’s business and wanted to exploit the name to divert Internet traffic from it, probably to benefit from pay-by-click arrangements with alternative suppliers).”
The Panel thus finds also paragraph 4(b)(iv) of the Policy to be applicable in this case since the Respondent has attempted to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services.
The Respondent has indeed reproduced the Complainant’s trademarks and published them at the online location corresponding to <manheimauction.com>. As stated, inter alia, in A. H. Belo Corporation v. King TV and 5 Kings, WIPO Case No. D2000-1336, “By using the domain names ‘king5tv.com’ and ‘king5news.com’, Respondents intentionally attempt to attract for financial gain Internet users to the Respondents’ websites and other on-line locations, by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondents’ websites and/or the goods or services offered therein.” See also Home Interiors & Gifts, Inc. v. Home Interiors, WIPO Case No. D2000-0010, and Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.
In view of the above, the Panel finds that the Respondent has registered and used the domain name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
In light of the foregoing, the Panel orders that the registration of the domain name <mainheimauction.com> be transferred to the Complainant.
Dated: October 9, 2006