WIPO Arbitration and Mediation Center
Manheim Auctions, Inc. v. Whois Privacy Protection Service, Inc./ Igor Nikolenko, Manhiem Ltd.
Case No. D2008-1146
1. The Parties
The Complainant is Manheim Auctions, Inc., of Atlanta, Georgia, United States of America (“USA”), represented by Dow Lohnes, PLLC, of Washington DC, USA.
The Respondents are Whois Privacy Protection Service of Bellevue, Washington, USA, and Igor Nikolenko, Manhiem Ltd, of Odessa, Ukraine.
2. The Domain Name and Registrar
The disputed domain name <manhiem.com> (the “Domain Name”) is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 28, 2008, naming Whois Privacy Protection Service as the sole Respondent.
The Center transmitted its request for registrar verification to the Registrar by email on July 29, 2008. The Registrar replied the same day, stating that the Domain Name had been placed under locked status to prevent transfers or changes to the registration information during this proceeding; that its registration agreement was in English and required the registrant to consent to the jurisdiction of the courts located in Kings County, Washington; and that the registrant had an organization name, Manhiem Ltd, first name, Igor, and last name, Nikolenko, with an address in Odessa.
The Center informed the Complainant of the Registrar’s identification of the registrant and invited it to file an amended Complaint. The Complainant did so, adding Igor Nikolenko, Manhiem Ltd., as an additional Respondent, and changing the mutual jurisdiction to which the Complainant submitted to that of the principal office of the Registrar.
The Center verified that the Complaint together with the amendment to 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondents of the Complaint, and the proceedings commenced on August 5, 2008. The notification appears to have been transmitted successfully by courier, fax and email to the first Respondent as well as by email to a personal address of the second Respondent as provided in the Registrar’s Whois database. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 25, 2008. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on August 26, 2008.
The Center appointed Jonathan Turner as the sole panelist in this matter on September 4, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint together with the amendment to the Complaint complied with applicable formal requirements, was duly notified to the Respondents and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.
4. Factual Background
The Complainant is the largest wholesale automobile auction company in the world and has approximately 150 auction facilities worldwide. It has branded itself and its services since at least 1945 under the marks MANHEIM and MANHEIM AUCTIONS. In 2006, it spent about $10.6 million on advertising and promoting its business under these marks in the USA, Australia, New Zealand and the United Kingdom.
The Complainant has registered various marks containing the word “MANHEIM” together with descriptive words such as “AUCTION” in the USA. It has also registered <manheim.com> and many other domain names containing “Manheim” or “Manhiem”.
The Domain Name was registered in the name of the second Respondent in 2001 and directed to website at “www.autobytel.com” of an Internet-based automobile auction service. The Complainant’s representatives complained to the second Respondent by letters of August 14 and September 20, 2001. In this period, the Domain Name was redirected to a website providing a framed version of a third party fan site for the actress/author Camryn Manheim.
By March 2002, the Domain Name had been redirected again to a website at “www.coolhits.com” which advertised a product for removing Internet pornography from a computer. In January 2004, the Domain Name resolved to a website at “www.findnewcarprices.com” which provided links to the websites of various automobile manufacturers and dealers and displayed a prominent advertisement for <autobytel.com>.
The Complainant’s representatives sent the second Respondent a further cease and desist letter in April 2004. Subsequently, the registration details were changed to identify the first Respondent as the registrant. At the date of the Complaint the Domain Name was directed to a series of portal websites providing links to automobile auction and other services and using phrases such as “Manheim Auto Auction” as links to information about the Complainant’s competitors.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to its registered and unregistered marks comprising MANHEIM. The Complainant points out that the Domain Name differs from MANHEIM only in the transposition of two letters and constitutes “typosquatting” of a kind which has been found to amount to confusing similarity in many other cases decided under the Policy.
The Complainant submits that the Respondent has no rights of legitimate interests in respect of the Domain Name. It confirms that it has not authorized the Respondent to use its marks. It maintains that the Respondent has not used or made demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services, since the Respondent’s use of the Domain Name to promote competing services or unrelated third party services does not amount to a bona fide offering of goods or services for this purpose.
The Complainant further contends that the Respondent is not commonly known by the Domain Name and is not making legitimate noncommercial or fair use of the Domain Name. The Complainant notes that the Respondent presumably receives compensation for providing links to third party commercial websites. The Complainant also points out that the second Respondent has been found to have registered domain names in which he did not have any rights or legitimate interests in two other cases decided under the Policy.
Finally, the Complainant submits that the Respondent has registered and is using the Domain Name in bad faith. The Complainant alleges that the Respondent is using the Domain Name intentionally to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks. The Complainant also relies on previous findings of bad faith registration and use of domain names on the part of the second Respondent and his registration of numerous domain names at least some of which incorporate other well-known marks.
The Complainant requests a decision that the Domain Name be transferred to itself.
As mentioned above, the Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the Complainant must prove
(i) that the Domain Name is identical or confusingly similar to a mark in which it has rights;
(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.
Each of these requirements will be considered in turn below.
In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible evidence of the Complainant which has not been disputed.
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has unregistered rights in the marks MANHEIM and MANHEIM AUCTIONS by virtue of longstanding and extensive use. It is also clear that the Complainant has registered rights in the mark MANHEIM AUCTIONS.
The Panel finds that the Domain Name is confusingly similar with these marks. The Domain Name differs from the MANHEIM mark only in the transposition of the letters “e” and “i” and the generic “.com” suffix. The transposition of these letters is readily made by mistake in spelling, typing or reading. Furthermore, the omission of the descriptive word “AUCTIONS” would not avoid confusion with the MANHEIM AUCTIONS mark, since many Internet users familiar with this mark would be likely to assume that the Complainant had adopted the Domain Name, omitting the unnecessary descriptive term in the mark for the sake of brevity.
The first requirement of the Policy is satisfied.
B Rights or Legitimate Interests
The Panel considers that the Respondents have not used or made demonstrable preparations to use the Domain Name for a bona fide offering of goods or services. In this Panel’s view, the mere provision of links to other websites does not constitute an offering of goods or services. In any case, the second Respondent’s use of the Domain Name to provide links to websites promoting the Complainant’s competitors is plainly not in good faith. His use of the Domain Name to promote a website advertising a product for removing pornography from computers was also without justification and not such as to give rise to any right or legitimate interest.
The bona fide use of a domain name for a fan site relating to a person which it identifies can give rise to a legitimate interest in certain circumstances. However, in this case it is evident that such use of the Domain Name by the second Respondent was not in good faith, but rather was a bad faith attempt to obscure the improper purpose of the registration.
Although the registrant of the Domain Name is identified as having the company name “Manhiem Ltd” in the Registrar’s Whois database, there is no reason to believe that either of the Respondents is commonly known by this name.
It is clear that the Respondents are not making legitimate noncommercial or fair use of the Domain Name; rather the use of the Domain Name is illegitimate and unfair as described below.
There does not appear to be any other basis on which the Respondents could claim to have a right or legitimate interest in respect of the Domain Name. In the circumstances, the Panel finds that the second requirement of the Policy is satisfied.
B Registered and Used in Bad Faith
The Panel finds that the second Respondent is using the Domain Name intentionally to attract Internet users to his website for commercial gain, in the form of compensation for links provided to third party commercial websites, by creating a likelihood of confusion with the Complainant’s marks. In accordance with paragraph 4(b)(iv) of the Policy, this constitutes evidence of registration and use of the Domain Name in bad faith.
Although the Domain Name was originally registered some seven years ago, there is no reason to suppose that it was registered with a different and bona fide intent. On the contrary, the Complainant’s undisputed evidence is that the Domain Name was being used shortly after its registration to promote the website of a competitor of the Complainant. It is therefore reasonable to infer that the second Respondent was acting in bad faith when he registered it.
The findings of bad faith registration and use against the Respondent in other proceedings under the Policy corroborate the evidence of bad faith in relation to the Domain Name in this case. The Panel concludes that the third requirement of the Policy is satisfied.
Although there has been considerable delay on the part of the Complainant in bringing this proceeding, laches do not provide a separate defence if the requirements of the Policy are established: see Deutsche Telekom AG v. Oded Zucker, WIPO Case No. D2004-0749.
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, <manhiem.com>, be transferred to the Complainant.
Date: September 18, 2008