WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Car Advisory Network, Inc. v. Journal Community Publishing Group, Inc.
Case No. D2008-0717
1. The Parties
Complainant is Car Advisory Network, Inc., Palo Alto, California, United States of America, represented by Bodman LLP, United States of America.
Respondent is Journal Community Publishing Group, Inc., Waupaca, Wisconsin, United States of America, represented by Michael Best & Friedrich, LLP, United States of America.
2. The Domain Name and Registrar
The disputed domain name <carconnection.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 7, 2008. On May 8, 2008, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On May 8, 2008 GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. 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 Respondent of the Complaint, and the proceedings commenced on May 16, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 5, 2008. The Response was filed with the Center on June 6, 2008 (shortly after midnight, Geneva time).
The Center appointed Richard G. Lyon as the sole panelist in this matter on June 13, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. The Panel has submitted his 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 parties offer information services in the automotive field, including classified advertisements and materials about automobile marketing.
Complainant was founded by, and is the principal commercial vehicle for, Paul Eisenstein, a journalist, publisher, or commentator on the automotive industry since 1979. Mr. Eisenstein is said, without supporting evidence, to be “one of the world’s mostly highly published automotive journalists.” He founded a company called “The Car Connection,” and in April 1996 began an online source of information about the automotive industry at “www.thecarconnection.com”. Complainant has used the designations “The Car Connection” and “Thecarconnection.Com” since at least that time. Complainant registered the mark THECARCONNECTION.COM with the United States Patent and Trademark Office (USPTO) in April 2003, claiming a first use of the mark in commerce of June 1996.
The disputed domain name was first registered in March 1996 by a company called NetLook, Inc. In April 1998 Respondent’s predecessor-in-interest, Add, Inc., purchased the disputed domain name and a trademark registered with the USPTO for CAR CONNECTION from their then-owner Target Publications.
Complainant’s counsel contacted NetLook to purchase the disputed domain name at some point prior to December 2000. Following NetLook’s offer to sell it for $480,000, Complainant’s counsel replied in writing declining that offer and proposing a $2,000 purchase price. NetLook’s and Complainant’s counsel exchanged letters in March 2001; in the last of these NetLook’s counsel stated that NetLook had transferred the disputed domain name to a third party effective March 2001.
Respondent believes (in allegations made upon information and belief) that through inadvertence the registration information for the disputed domain name was never changed following Respondent’s acquisition of it, and that Complainant’s 2001 inquiry to NetLook prompted Respondent or NetLook or both to effect the transfer at that time.
Through a broker, Complainant again attempted to acquire the disputed domain name in 2005, but was unsuccessful.
Respondent or one of its predecessor companies has used the phrase “Car Connection” since 1994 for publications featuring various forms of advertising for automobiles. Since September 2002 Respondent has published a weekly listing of classified advertisements for automobiles named “Car Connection Weekly” and owns a domain name <carconnectionweekly.com>. As noted, in 1998 Respondent acquired a USPTO-registered trademark for CAR CONNECTION. The USPTO data base indicates that this mark was cancelled in 2004.
According to the archives at “www.archive.org” Respondent used the disputed domain name only briefly in 2001 but in 2006 began using it for its weekly publication and a searchable data base for automobile classified advertisements.
The parties apparently conferred in April 2008 regarding ownership of the disputed domain name, but could not reach agreement.1
5. Parties’ Contentions
Complainant contends as follows:
Identical or Confusingly Similar. Complainant has rights in the phrase “Thecarconnection” by reason of its USPTO-registered mark. The disputed domain name is identical to this mark except for addition of the gTLD “.com” and deletion of the definite article “the”. Complainant contends there has been actual confusion, citing publications by third parties that associate Complainant or Mr. Eisenstein with the disputed domain name.
Rights or Legitimate Interests. Respondent’s lack of rights or legitimate interests in the disputed domain name is demonstrated by its virtual non-use of it for five years after acquiring it. The brief use of it in 2001 is said to have been pretextual. Complainant has never authorized Respondent to use its mark. “Respondent does not appear to have ever been commonly known” by the disputed domain name or the phrase “carconnection.com”. Citing its correspondence with Netlook, Complainant contends Respondent’s sole purpose in keeping the domain name was eventually to sell it to Complainant. Quoting from the Complaint, “At the time that it acquired the domain, Respondent had constructive notice of Complainant’s rights in the Mark, and on information and belief, had actual notice of Complainant, its services, the goodwill that Complainant had built in the Mark, and possibly that Complainant had desired to secure the domain from NetLook. These facts and the circumstances indicate that Respondent acquired the disputed domain name primarily for the purpose of running a business that competes with that of Complainant. Actual confusion exists.”
Registered and Used in Bad Faith. The same contentions establish bad faith in registration and use. Respondent’s recent use of the disputed domain name for a competing service is further evidence of bad faith.
Respondent contends as follows:
Identical or Confusingly Similar. Respondent advances several principles of United States of America trademark law to demonstrate that the disputed domain at issue is not confusingly similar to Complainant’s mark. The mark is descriptive and therefore weak; indeed there are several other registered trademarks that are analogous that the USPTO did not find confusingly similar. Under the multifactor test set out in E.I. DuPont de Nemours & Co., 476 F. 2d 1357 (C.C.P.A. 1973), the disputed domain name is not confusingly similar to Complainant’s marks. Respondent’s services are not similar to and not competitive with Complainant’s, and therefore there can be no confusion. Respondent supports this contention by referring generally to the two websites, and alleging that Respondent offers classified advertisements, while Complainant offers chat rooms and information about the automotive industry, shows, and racing events.
Rights or Legitimate Interests. Respondent’s or its predecessors’ use of the phrase “Car Connection” since 1994 and its continuous use of the phrase “Car Connection” in its weekly publication show that “before any notice to [it] of the dispute, [it has] use[d] . . . a name corresponding to the domain name in connection with a bona fide offering of goods or services,” and is thus within the safe harbor of paragraph 4(c)(i) of the Policy. Because the domain name at issue is descriptive of Respondent’s business, Respondent has a legitimate interest in its use, even if confusion is found.
Registered and Used in Bad Faith. Again because the disputed domain name is descriptive of its business, Respondent’s use it is not evidence of bad faith.
Further, regardless of the date Respondent is considered to have acquired the domain name-in 1998 when it purchased it from Netlook or in 2001 when the domain name was properly transferred-Respondent owned a federally registered trademark in the mark CAR CONNECTION. This fact prevents any finding of bad faith.
Respondent replies to Complainant’s allegation that Respondent acquired the domain name with the intent to sell it to Complainant by citing Complainant’s Exhibit L, in which the broker Complainant hired to try to acquire the domain name informed Complainant that “[Respondent] does not wish to sell the domain at this time.”
Respondent also asserts that if the likelihood of confusion is in doubt, the panel is not the appropriate forum for resolution of the question, citing Credit Management Solutions, Inc. v. Collex Resource Management, WIPO Case No. D2000-0029.
Laches. Complainant’s claim is barred by laches. Complainant threatened UDRP action against NetLook, Inc. eight years ago, and has given no excuse for its delay in bringing this proceeding. Transferring the domain name now would prejudice Respondent, as Respondent has invested in the domain name at issue by incorporating it into Respondent’s business.
6. Discussion and Findings
The Panel may quickly resolve the merits of this proceeding. The requirements of paragraph 4(a) of the Policy are conjunctive, and failure to prove any of them requires the Panel to deny the Complaint. Two uncontested facts establish that Respondent has a right to and a legitimate interest in the disputed domain name and could not have registered it in bad faith: When Respondent acquired the disputed domain name (a) it held a trademark registered in the USPTO for CAR CONNECTION, and (b) it regularly published a periodical that incorporated the words “Car Connection” as its dominant feature. The first of these facts comes from a public record, and Complainant acknowledges the second in the Complaint. Either fact demonstrates that Respondent was thus commonly known by the disputed domain name years prior to this dispute,2 and the latter illustrates use of it in connection with a bona fide business (its weekly magazine) well before this proceeding began. Complainant has not met its burden under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy and the Complaint must be denied.
Denial of the Complaint based on facts alleged in the Complaint justifies a finding of Reverse Domain Name Hijacking,3 and ordinarily this Panel would make that finding for this reason. Such a finding is discretionary with the Panel, however, and as in Rudy Rojas v. Gary Davis, WIPO Case No. 2004-1081, Respondent’s conduct in this proceeding leads the Panel to refrain from doing so.
Both parties have cluttered the record with argument that has little if any bearing on this proceeding. Complainant several times refers to “constructive notice” and “presumptions” about Respondent’s motives. Respondent goes to great length to argue a lack of similarity between two phrases that differ only by inclusion or not of the definite article “the”, and in advancing its laches defense. One need not be a Policy expert to know that the Policy does not incorporate the first two of these trademark law doctrines; the WIPO Overview of WIPO Panel Views on Selected UDRP Questions on the Center’s website states Consensus Views (paragraphs 3.4 and 1.2, respectively) that neither doctrine applies. Panels under the Policy have uniformly and categorically rejected applying the equitable doctrine of laches in these administrative proceedings, a view easily ascertained through the search tools on the Center’s website.4 Both parties similarly argue about trademark “priorities” between them. As each party has a registered trademark that the Panel has no power or authority to ignore, interpret, or set aside (WIPO Overview, paragraph 1.1), these arguments are largely irrelevant as well.
The Policy is limited, compared to national trademark law, in the scope of claims and defenses it can consider, the evidence it can hear, and the relief it can grant. “[The Policy] applies only to disputes involving alleged bad faith registration and use of domain names-conduct commonly known as ‘cybersquatting’ or ‘cyberpiracy.’ The Policy does not apply to other kinds of disputes between trademark owners and domain name registrants.” Bradford & Bingley Plc v. Registrant info@fashionID.com 987654321, WIPO Case No. D2002-0499. These limitations are not arbitrary: the Policy was intended to be, and designed to be, a forum for asking a narrow set of questions relevant to a single cause of action. The nature of that cause of action dictates the form of the proceeding.5 That is why, for example, whether a likelihood of confusion exists is a simpler inquiry under the Policy than under trademark law6-the full scope of the inquiry under trademark law is impractical and unnecessary when the cause of action is limited to cybersquatting.
Similarly a panel in a Policy proceeding will not consider tangential arguments such as laches and claims of wrongs other than cybersquatting.7 Nor will it consider arguments that would bear on infringement in a trademark action, but are simply beyond the scope of the Policy, such as the likelihood of confusion from a non-competitive use. (WIPO Overview, paragraph 1.2). Fact-finding under the Policy is tailored to the narrow questions it addresses: ownership of trademarks and facial similarity between a mark and a domain name.8 More than occasionally the substantive standards differ as well. The Policy most definitely is not an abbreviated or inexpensive alternative to an infringement action. Both parties to this proceeding appear to think otherwise, however.
The Rules (paragraphs 3(b)(xiv) and 5(b)(viii)) require each party to certify, among other things, that its assertions “are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument.” Those certifications in this proceeding appear to be little more than copying the applicable language without thought to the substance and purpose of the Rules. In this Panel’s opinion more is required, at a minimum a basic understanding of the Policy and the precedent developed under the Policy over the past decade. That includes how the Policy sometimes differs in significant respects from national trademark law. That basic knowledge in this case, in which Consensus Views from the WIPO Overview directly refute an argument fundamental to each side’s argument, might have led the parties directly to the national courts, where any dispute between them articulated in the Complaint clearly belongs.
With both parties equally at fault, the Panel will not appear to condone either party’s conduct, choosing instead, as in the Rojas case, to declare “a plague o’ both your houses.”
For all the foregoing reasons, the Complaint is denied.
Richard G. Lyon
Date: June 27, 2008
1 As is true of many of Complainant’s allegations there is no evidentiary support for this contention.
2 Interactive Study Systems Inc. v. BFQ, WIPO Case No. D2008 0205.
3 See, e.g., Liquid Nutrition Inc. v. liquidnutrition.com/Vertical Axis Inc., WIPO Case No. D2007-1598; Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Administrator, WIPO Case No. D2007-0856 (dissenting opinion).
4 E.g., HRB Royalty, Inc. v. Asif Vadaria, WIPO Case No. D2007-1658 (“[T]he doctrines of acquiescence or laches do not apply in UDRP proceedings. The fundamental difficulty for a respondent claiming laches or the like is that there is nothing either in the Policy or the Rules that suggests that such a doctrine should apply.” (citations omitted).
5 Cimcities, LLC v. John Zuccarini d/b/a Cupcake Patrol, WIPO Case No. D2001-0491 (“[T]here are essential differences between trademarks and domain names that must be borne in mind. There can be more than one registrant of the same trademark and its effect may be limited by the category of goods to which it relates, and the geographic boundaries of its territorial protection. There are no such limitations with domain names. Due to the latter’s technological limitations and boundless use, only one entity can be registered as a domain throughout the world. Thus, there is ample justification for different legal principles to apply to the Uniform Dispute Resolution Policy, its Rules, and the interpretation given to these by Administrative Panels operating thereunder.”).
6 See, e.g., Sallie Mae Inc. v. Richard Jones, WIPO Case No. D2006-1558.
7 See, e.g., Jules I. Kendall v. Donald Mayer Re skipkendall.com, WIPO Case No. D2000-0868.
8 See, e.g., Sallie Mae Inc. v. Richard Jones, WIPO Case No. D2006-1558 (“[B]ecause the Policy does not permit discovery, a complainant may rarely manage to adduce evidence of actual confusion. Indeed, it has been stated that ‘[e]vidence of lack of actual confusion is irrelevant’”) (quoting Gateway, Inc. v. Pixelera.com, Inc., WIPO Case No. D2000-0109)).