The Complainant is TPI HOLDINGS, INC., of Georgia, United States of America, represented by Dow Lohnes, PLLC, of Washington D.C., United States of America.
The Respondent is Nadeem Qadir, of Dhaka, Bangladesh.
The disputed domain name <aututrader.com> is registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 12, 2008. On September 15, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On September 15, 2008, eNom transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was October 14, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 15, 2008.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 30, 2008. 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.
Because only a postbox address for the Respondent was provided in the Registrar's response to the Request for Registrar Verification, the Notification of the Complaint proved undeliverable by courier. However, whereas notification to the ‘firstname.lastname@example.org'was returned as undeliverable, notification to another Registrant email address was not so returned. The Panel finds that the notification requirements of the Rules have been satisfied.
The Complainant owns the United States registered trade marks AUTO TRADER (No. 1247037 and 2390815, in relation to goods and services in international classes 16, 35, and 42); AUTOTRADER.COM (No. 2381590, in relation to services in international class 35); and a design mark representing AUTOTRADER.COM in a particular manner (No. 3449402, in relation to services in international class 35).
The Complainant licenses the relevant marks exclusively to Cox Auto Trader Inc. which in turn exclusively sublicenses the marks to AutoTrader.com, Inc. All use of the relevant marks inures to the benefit of the Complainant.
The <autotrader.com> domain name has been registered by Cox Auto Trader, Inc., an affiliate of the Complainant.
The disputed domain name was registered by the Respondent or its predecessor in interest on September 8, 2001.
The Complainant's exclusive licensee Cox Auto Trader, Inc. and its predecessors in interest have sold and distributed automotive periodicals under the Auto Trader trade mark since 1974 throughout the United States. Since 1998 the Complainant's exclusive sublicensee AutoTrader.com, Inc. has provided online classified advertising services under the AutoTrader.com mark owned by the Complainant. AutoTrader.com, Inc. offers the largest selection of vehicles on the Internet and also offers, via its website, information and assistance associated with the selling of vehicles, including with finance, insurance and warranty programs. Approximately 13 million unique users are logged on the Complainant's <autotrader.com> website each month. The Complainant asserts that it and its licensees have spent millions of dollars promoting their business, goods and services under the relevant marks.
The Respondent is not authorized or licensed to register the contested domain name, nor is it a licensee or authorized to use the Complainant's relevant marks in any other way. The Complainant learned in August 2008 that the Respondent had registered the contested domain name. The Complainant sent a letter of demand to the Respondent on August 18, 2008 to which no response was received.
The Complainant asserts that Internet users who type in the contested domain name are redirected to a website (“usseek.com.search/internet/”) which operates a generic search engine and contains a list of sponsored links to websites that operate in the same field as the Complainant's licensee and sublicensee, namely automotive-related goods and services.
The Complainant asserts that the contested domain name is confusingly similar to the Complainant's AUTOTRADER.COM and AUTO TRADER trade marks because it is virtually identical, differing only in the substitution of one letter and the contraction of the latter mark into one word. This elimination of the space between two words is an insubstantial difference. The addition of “.com” is irrelevant to the issue of similarity. The Complainant asserts that the substitution of ‘u' for ‘o' is inconsequential because internet users will commonly mistype ‘auto' in that manner. This practice of ‘typosquatting' has been consistently held by past Panels to create a confusingly similar domain name. The potential for confusion is exacerbated because the website to which the contested domain name resolves contains links to goods or services similar to those offered by the Complainant and its licensee and sublicensee. Given the similarity in the domain name and in the goods and services offered, an internet user seeking out the Complainant's website is likely to be confused into thinking there is some association, affiliation or sponsorship.
The Complainant asserts that where a registrant has knowingly registered a domain name that is confusingly similar to the Complainant's it is well established that there can be no bona fide use under Para 4(c)(i) of the Policy. The Respondent cannot establish rights as it has never made any use, or prepared for use of the contested domain name in connection with a bona fide offering of goods or services. Instead the Respondent has parked the domain name at a portal site providing links to third party commercial websites. Using a confusingly similar domain name to misdirect potential visitors and then earn compensation by way of click through license fees related to third party commercial sites is not legitimate non-commercial use, as has been repeatedly affirmed by past Panels. The Complainant asserts that the Respondent is intentionally trading off the Complainant's goodwill in its registered marks, and there is no conceivable legitimate justification for the registration and use of the contested domain name.
The Respondent is not commonly known under the contested domain name, and the Complainant is not aware of any trade mark rights owned by him. His only known association with the Complainant's marks is through his <aututrader.com> website, but such association, based on a bad faith intent to capitalize on the Complainant's goodwill, cannot form the basis of a legitimate interest since it does not amount to a bona fide use. Additionally the Respondent has not been authorized to use the Complainant's mark in any way: unauthorized use of the kind the Respondent has engaged in cannot form the basis of a claim of rights or legitimate interests.
Nor can the Respondent establish rights on the basis of a legitimate noncommercial or fair use of the contested domain name. Misdirecting potential visitors to its own website and then earning presumed click through license fees is not a legitimate noncommercial or fair use.
The Complainant asserts that the Respondent has deliberately chosen to register a domain name incorporating the Complainant's registered and well known mark, which constitutes registration in bad faith. The Respondent has then used the contested domain name in the deceptive manner already described, for commercial gain, constituting bad faith use. The Respondent's use of the contested domain name is in bad faith because it unfairly trades on the reputation of the Complainant's marks and threatens the integrity and valuable goodwill that are inherent in those marks.
The Complainant further asserts that the Respondent has also been involved in a number of other UDRP proceedings where findings of bad faith were made (the Complainant cites inter alia WIPO Case No. D2007-1500; WIPO Case No. D2005-1193; and WIPO Case No. D2005-1315). Accordingly it is clear that the Respondent has been engaged in the practice of ‘typosquatting' which in itself is evidence of bad faith registration and use, as has been held by numerous Panels in previous cases.
The Respondent did not reply to the Complainant's contentions.
The contested domain name is not identical to either of the relevant marks of the Complainant. However, in comparison with the mark AUTOTRADER.COM of the Complainant the difference is minimal. It lies only in the single letter ‘u' substituted for ‘o'. In terms of the AUTO TRADER mark, the only differences lie in the contraction of the two terms, the substitution of the ‘u' for ‘o' and the addition of “.com”. None of these modifications separately or cumulatively are significant, or result in a sufficiently different and distinguishable domain name. The appearance of ‘u' rather than ‘o' is the most relevant difference, but this difference is so small that it would mostly go unnoticed. The change does not bring about a domain name with an inherently different meaning or association, nor does it cause a significant change in visual appearance or aural quality compared to the registered marks of the Complainant. Rather, the contested domain name closely shadows and immediately invokes the Complainant's relevant marks.
Therefore the Panel finds that the contested domain name is confusingly similar to the Complainant's trade marks AUTOTRADER.COM and AUTO TRADER.
Neither the Complainant, nor its exclusive licensee or sublicensee have ever authorized the Respondent to register a domain name incorporating the AUTO TRADER marks or any mark that is confusingly similar to it.
There is no evidence of any bona fide offering of goods or services on the website to which the contested domain name resolves. The Panel when accessing the relevant website on November 11, 2008, was redirected to a generic website whose url begins with “http://usseek.com”, and which contains a list of hyperlinks. These links themselves referred to subject matter unrelated to any aspect of the automotive business, mostly relating to concert tickets and the like. The screenshots provided by the Complainant, dated August 12, 2008, and September 5, 2008 have the same appearance, also listing hyperlinks. While the Complainant contends that the website “contains a list of sponsored links to other websites that operate in the same field as [the] Complainant's licensee and sublicensee, namely automotive–related goods and services.” (Complaint at para ), this is not borne out by the screenshots provided in evidence. The links appear substantially unrelated to any aspect of the automotive business. The screenshot for the date of Notification (September 24, 2008) provided by the Center also does not contain hyperlinks that refer to subject matter within the sphere of activities of the Complainant. They mostly relate to bad credit problems and solutions. The Panel therefore finds that the Complainant has not made out that the hyperlinks provided at the website to which the contested domain name resolves are intentionally or systematically directed towards goods or services offered by third parties that compete with or cut across those provided by the Complainant under its relevant trade marks. Rather the hyperlinks vary over time, and on the evidence available appear to be randomly generated.
However, this does not detract from the conclusion that the Respondent is not using the contested domain name for a bona fide offering of goods or services which could form the basis of an assertion of rights or legitimate interests. Whereas it may in certain circumstances be perfectly legitimate to acquire a domain name and use it to establish a website on which sponsored hyperlinks are displayed, in the light of the fact that the Complainant's marks are well known and were so at the time of registration of the contested domain name, and of the apparently deliberate misspelling to approximate the Complainant's mark as closely as possible, the necessary bona fides are lacking in this case. As the argument has been submitted by the Complainant, it is open to the Panel to conclude that the Respondent has deliberately chosen to register a close shadow domain name, seeking to benefit from the mistakes and resulting misdirection of Internet users seeking to access the Complainant's own website.
The Respondent is not commonly known by the contested domain name, nor is there any evidence before the Panel that the Respondent has acquired trade mark or service mark rights that might assist him in making a case. Furthermore, since the Panel is persuaded that the Respondent has engaged in the practice of ‘typosquatting' in this case, with a view to making a commercial gain from misdirecting consumers to his website, it cannot be said that the Respondent is making a legitimate non-commercial or fair use of the contested domain name.
Therefore the Panel holds that the Respondent has no right or legitimate interest in the contested domain name.
At the time of the initial registration of the contested domain name, and at all times thereafter, the Complainant's marks were very well known, as established by the evidence of website use figures, advertising and promotional expenditure and volume of listings submitted by the Complainant. It is therefore highly unlikely that the Respondent was not aware of the Complainant's marks at all relevant times. Furthermore, it is difficult to conceive of any good faith reason to acquire a domain name that so closely shadows the Complainant's marks but incorporates a manifest misspelling as it does. The word ‘autu' or the words ‘autu trader' have no immediately apparent meaning or utility, and none has been put before the Panel by the Respondent. The terms leave no other impression than a misspelling of “auto trader”. In the absence of any evidence to the contrary the only conclusion open to the Panel is that the Respondent's registering of the contested domain name was for the purpose of “cybersquatting”, ie. to profit from the close resemblance with the Complainant's trade marks by misdirecting internet users to the Respondent's own unconnected website. Furthermore, the fact that the domain name resolves to a portal site with numerous hyperlinks, indicates that the Respondent has engaged in a deliberate scheme to derive some financial gain from the misdirection of Internet users. In other words, in terms of para 4(b)(iv) of the Policy, the Panel is persuaded that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to [the Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.”
Therefore the Panel finds that the contested domain name was registered and is being used in bad faith.
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 <aututrader.com> be transferred to the Complainant.
William A. Van Caenegem
Dated: November 13, 2008