WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings, Inc. v. Sona Sinanyan
Case No. D2010-1020
1. The Parties
The Complainant is TPI Holdings, Inc., Virginia, United States of America, represented by Kilpatrick Stockton LLP, United States of America.
The Respondent is Sona Sinanyan, California, United States of America.
2. The Domain Names And Registrar
The disputed domain names <cycletradermagazine.com> and <cycletradermagazines.com> are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2010. On June 22, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On June 22, 2010, GoDaddy.com, Inc. 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” or “UDRP”), 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 June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 26, 2010.
The Center appointed Angela Fox as the sole panelist in this matter on August 8, 2010. 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 and its predecessors, affiliates and licensees have been using various marks incorporating a vehicle term together with the word TRADER for more than 30 years, in connection with publications enabling private individuals to sell their vehicles.
One of the Complainant’s publications is CYCLE TRADER magazine, which the Complainant has been publishing since 1978 as a periodical dedicated to the sale of motorcycles by private individuals. Annexed to the Complaint was a copy of a front cover of that magazine from 2005. In 1996, the Complainant launched an Internet presence for its CYCLE TRADER publication on its TRADER ONLINE website, which promoted the Complainant’s entire family of TRADER-branded publications (an historical print-out from that website was attached to the Complaint). In 2000 it began operating a separate website under the domain name <cycletrader.com>, also dedicated to helping private individuals sell their motorcycles and containing inter alia “Motorcycle Tips and Resources.” Annexed to the Complaint was a print-out of the homepage from that website.
The Complainant states that over the past 30 years it has spent hundreds of thousands of dollars marketing and promoting its business under the CYCLE TRADER mark. It claims to have sold millions of dollars of advertising in its CYCLE TRADER publications and to have distributed millions of copies of its CYCLE TRADER magazine. The Complainant further states that its website at “www.cycletrader.com” posts over 150,000 listings for motorcycles every year and receives millions of visitors annually, receiving over 37,000,000 visits in the last two years alone.
The Complainant owns United States federal trademark registrations for CYCLE TRADER, including registration nos. 2294240 dating from November 23, 1999 and 1627016 dating from December 11, 1990, as well as registration no. 1450707 for CYCLE, BOAT, & RV TRADER, dating from August 4, 1987. Details of those registrations were annexed to the Complaint.
The disputed domain name <cycletradermagazine.com> was registered on February 29, 2008 and the disputed domain name <cycletradermagazines.com> was registered on April 10, 2009. Annexed to the Complaint were print-outs showing that in June 2010 these websites were linked to pay-per-click (“PPC”) landing sites featuring sponsored links, including to third-party websites featuring motorcycle advertisements in competition with the Complainant. The site also includes links to the Complainant’s own “www.autotrader.com” website and lists as a search category “Online Trader,” which is similar to the Complainant’s trademark and website name, TRADER ONLINE. The Complaint states that clicking on that category takes the visitor to results for various third-party sites offering classified ads for vehicles.
According to the Complaint, the Respondent also registered a third domain name, <rvtradermagazines.com>, which is confusingly similar to the Complainant’s own RV TRADER trademark, for which it owns United States federal trademark registrations under nos. 1822663 and 2294239, and which it has used for many years in respect of publications relating to the sale of recreational vehicles. Annexed to the Complainant were print-outs from the website linked to <rvtradermagazines.com> from March 2010, showing that it was linked to a page prominently displaying the words CYCLE TRADER MAGAZINE and offering a classified advertising service for motorcycles in direct competition with the Complainant, and of Google search results from March 2010 that produced a hit for “www.rvtradermagazines.com”, which invited users to “Leave it up to the professionals at Cycle Trader Magazine to sell your motorcycle for you.” The domain name <rvtradermagazines.com> lapsed before the Complaint was filed.
The Complainant annexed copies of correspondence showing that it had attempted to write to the Respondent concerning its use of the disputed domain names in March 2010, but that its correspondence was undelivered because the Respondent’s WhoIs details were incomplete. Those details were corrected after the Complainant contacted the Registrar about the Respondent’s activities in April 2010. On April 7, 2010 the Respondent replied to the Complainant’s cease and desist demand with an email reading,
“My Name is Sam the owner of the cycletradermagazine.com
My contact number is 213-928-2702 regarding trademark email you send me.
Cycletradermagazine.com is for sale for $25,000”
On April 8, 2010 the Complainant replied reiterating its cease and desist demand and stating that it would not be paying the Respondent for the transfer of the domain names. The Respondent replied,
“I will unlock the domain name, but as from giving it up to your company, its not going to happen.
The domain was available at the time of purchase, but I didn’t know about the trademark rights.
I am willing to close the “www.cycletradermagazine.com”, “www.rvtradermagazines.com” , “www.cycletradermagazines.com” , or any other that has to do with the trade mark issue.
I will cooperate with you in anyway beside giving up the domain.”
The Complaint was filed on June 21, 2010.
5. Parties’ Contentions
The Complainant claims that the disputed domain names are identical or confusingly similar to its registered trademarks CYCLE TRADER and CYCLE, BOAT, & RV TRADER, differing only in the non-distinctive domain name suffix “.com” and in the addition of the descriptive words “magazine” and “magazines,” respectively, which directly relate to the nature of the Complainant’s CYCLE TRADER publications. The Complainant avers that as a result of its lengthy and extensive use and promotion of the CYCLE TRADER mark, the mark has come to be associated exclusively with it by dealers in the industry and the relevant public.
The Complainant asserts, moreover, that the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant’s first use and registration of the CYCLE TRADER mark predates any use by the Respondent by more than 30 years, and indeed the Complainant’s use of and reputation in the CYCLE TRADER mark for publications relating to the sale of motorcycles appears to have prompted the Respondent to adopt the disputed domain names. Moreover, the Respondent’s use of the disputed domain names misleadingly diverts potential customers of the Complainant to the Respondent’s websites for commercial gain in the form of click-through revenue. The Respondent is not therefore making a “fair use” of the disputed domain names, nor are they being used merely to describe the click-through services offered through the Respondent’s sites.
Finally, the Complainant contends that the disputed domain names were registered and have been used in bad faith. It asserts that the Respondent relies on the trickery of domain names that incorporate the Complainant’s trademarks to divert Internet traffic to its websites, enabling the Respondent to collect “click-through” revenue from the operator of the linked sites. The content on the Respondent’s websites is likely to confuse and divert consumers and ties the websites to the goodwill associated with the Complainant’s TRADER marks, including CYCLE TRADER. The Respondent has therefore intentionally attempted to attract Internet users to its websites and other online locations, for commercial gain, by creating a likelihood of confusion with the Complainant’s marks as to source, sponsorship, affiliation or endorsement of the Respondent’s sites or the links on its sites.
Moreover, the Respondent’s offer to sell the disputed domain name <cycletradermagazine.com> for U.S. $25,000 is evidence that it registered the disputed domain names with the intention of selling them to the Complainant for costs in excess of its out of pocket costs associated with the domain names.
The Complainant also contends that the Respondent’s registration of multiple domain names that trade on the Complainant’s marks and refusal to transfer them to the Complainant also demonstrates a pattern of behaviour and intent to prevent the Complainant from reflecting its own mark in a corresponding domain name.
The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.
A. Identical or Confusingly Similar
The Complainant has proved ownership of registered trademark rights in CYCLE TRADER. That mark appears in its entirety in each of the disputed domain names.
The remaining elements in the disputed domain names, “magazine” in one and “magazines” in the other, are directly descriptive of the nature of the Complainant’s CYCLE TRADER publication.
The mere addition of a descriptive term to a trademark does not avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor is in some way relevant to a complainant’s business (see inter alia American Automobile Association, Inc. v Nevis Domains LLC, WIPO Case No. D2006-0489; American Automobile Association, Inc. v AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338). Indeed, the descriptiveness of the additional element in the disputed domain names is so apt that it is likely to encourage Internet users to make a link between the disputed domain names and the Complainant.
The domain name suffix “.com” is non-distinctive and has no impact on the comparison of the disputed domain names with the Complainant’s trademark rights.
The Panel finds that the disputed domain names are confusingly similar to the Complainant’s registered CYCLE TRADER trademark.
B. Rights or Legitimate Interests
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on complainants, but panels have long recognised that the information needed to prove such a right or legitimate interest is normally in the possession of respondents.
In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the respondent carries the burden of showing that he does indeed have such a right or interest (see, inter alia, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). In this case, the Complainant has put forward a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. There is nothing on the record to indicate that the Respondent might enjoy such a right or legitimate interest, and it has not attempted to refute the Complainant’s assertions.
The Respondent registered the disputed domain names some 30 years after the Complainant began publishing its CYCLE TRADER magazine, and the Respondent’s references to “Cycle Trader Magazine” in the context of helping private individuals to sell their motorcycles, on the website at its now lapsed domain name <rvtradermagazines.com>, strongly point to an awareness of the Complainant’s publication, which the Complainant has proved is widely published and known in the United States, where both it and the Respondent are based. So, too, does the Respondent’s use of the disputed domain names to link to a pay-per-click (“PPC”) landing site hosting links to inter alia third-party commercial websites relating to the sale of motorcycles, which is the field in which the Complainant operates.
The Respondent’s unauthorised use of domain names incorporating the Complainant’s registered trademark and relevant descriptors in order to attract Internet users to PPC landing pages promoting competing businesses does not give rise to a right or legitimate interest in the disputed domain names. The attractiveness of the disputed domain names as addresses for PPC landing pages is bound up in their combination of the Complainant’s distinctive trademark with descriptive words directly relevant to the Complainant’s business, as is evident from the Respondent’s attempts to capitalise on the Complainant’s reputation in its CYCLE TRADER magazine by referring to it on the website previously linked to the now-lapsed <rvtradermagazines.com> domain name. Other panels have regarded such circumstances as evidence of cybersquatting behaviour; the Panel notes in particular the observations of the panel in mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141: “If the links on a given landing page are based on the trademark value of the domain names, the trend in UDRP decisions is to recognize that such practices generally… constitute abusive cybersquatting” (see, similarly, Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; Grundfos A/S v. Texas International Property Associates, WIPO Case No. D2007-1448; Champagne Lanson v. Development Services/MailPlanet.com, Inc., WIPO Case No. D2006-0006; The Knot, Inv. v. In Knot we Trust Ltd, WIPO Case No. D2006-0340); and Brink’s Network, Inc. v. Asproductions, WIPO Case No. D2007-03530).
The disputed domain names are inherently likely to mislead Internet users, and the Respondent has not attempted to argue, nor is there any evidence that it could persuasively argue, that it has been making a legitimate non-commercial or fair use of the domain names, given its use of the domain names to link to PPC landing sites from which the Respondent apparently derives click-through revenue. Such use is not a legitimate non-commercial or fair use.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
The Complainant has proved lengthy and substantial use of CYCLE TRADER in the United States in the field of magazines and on-line publications relating to the sale of motorcycles. The information and materials provided in and with the Complaint indicate that the CYCLE TRADER mark is widely recognized by consumers in the United States and has acquired significant goodwill there.
The Respondent is based in the United States, the Complainant’s home market. Given the long-standing use and commercial success of the CYCLE TRADER mark in the field of magazines and on-line publications relating to the sale of motorcycles in the United States, it is highly improbable that the Respondent had no knowledge of the Complainant’s CYCLE TRADER mark when it registered the disputed domain names.
Indeed, it is likely that such knowledge is what prompted the registration of the domain names and the Respondent’s use of them to host links to websites of the Complainant’s competitors in the motorcycle sales field. It is hard to see why else the Respondent would have chosen domain names including the trademark CYCLE TRADER and the descriptive words “magazine” and “magazines,” which directly describe the Complainant’s well-known publication, particularly given that the Respondent does not appear to have published a magazine of any kind. The Respondent has offered no alternative explanation for its conduct, and the Panel concludes that the Respondent adopted the disputed domain names with the hope and intention of attracting Internet users seeking the Complainant, with a view to profiting from click-through revenue arising from such visits (see inter alia American Automobile Association, Inc. v. Texas International Property Associates, WIPO Case No. D2007-0592).
Under paragraph 4(b)(iv), the Panel is entitled to find both registration and use in bad faith where there is evidence that by using the domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on it.
In this case, it appears that the Respondent deliberately set out to derive PPC revenue from Internet users by creating a likelihood of confusion with the Complainant’s trademark. It adopted confusingly similar domain names and used them to host PPC links to third-party websites offering services in the field of motorcycle sales, the Complainant’s own field of activity. Such conduct is inherently misleading, and the use of a confusingly similar domain name to lure Internet users to a PPC landing site hosting links to providers of competing products or services is prima facie evidence of bad faith (see inter alia American Automobile Association, Inc. v Texas International Property Associates, WIPO Case No. D2007-0592, supra; mVisible Technologies Inc v. Navigation Catalyst Systems, Inc, WIPO Case No. D2007-1141, supra; Mudd, LLC v. Unasi, Inc., WIPO Case No. D2005-0591; and Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556).
The Panel finds that the Respondent’s conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Under paragraph 4 (b) (i) of the Policy, the Panel is also entitled to find both registration and use in bad faith where there is evidence of circumstances indicating that the Respondent has registered or acquired the domain names primarily for the purpose of selling, renting, or otherwise transferring the registrations to the Complainant trademark owner, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names.
In this case, the Complainant has shown in evidence that the Respondent offered to sell the disputed domain name <cycletradermagazine.com> to the Complainant for U.S. $25,000 following the Complainant’s written cease and desist demand. This fact, coupled with the other circumstances identified above showing the Respondent’s awareness of the Complainant’s CYCLE TRADER magazine and trademark at the time the disputed domain names were registered, strongly points to opportunistic registration of the domain names by the Respondent, in the hope of later profiting from their onward sale to the Complainant. The requested consideration of U.S. $25,000 is substantially more than any plausible out-of-pocket expenses on the part of the Respondent directly related to the disputed domain names.
The Panel finds that the Respondent’s conduct constitutes evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy, as well.
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 names, <cycletradermagazine.com> and <cycletradermagazines.com>, be transferred to the Complainant.
Dated: August 22, 2010