WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Cox Automotive Australia Pty, Ltd v. CarSales.com Limited / Matt Martin

Case No. DAU2017-0012

1. The Parties

The Complainant is Cox Automotive Australia Pty, Ltd of Altona North, Australia, represented by Kilpatrick Townsend & Stockton LLP, United States of America.

The Respondent is CarSales.com Limited / Matt Martin of Richmond, Australia, self-represented.

2. The Domain Name and Registrar

The disputed domain name <autotraders.com.au> is registered with Netnames Pty Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 4, 2017. On May 5, 2017, the Center transmitted by email to Netnames Pty Ltd. a request for registrar verification in connection with the disputed domain name. On May 8, 2017, Netnames Pty Ltd. 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 .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 May 17, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was June 6, 2017. The Response was filed with the Center on June 2, 2017.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on June 15, 2017. 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 operates an online automotive classifieds business in which, amongst other things, people offer for sale new and used cars. In Australia, the Complainant operates this business mainly from its website at “www.autotrader.com.au”.

Although it is not clear from the Complaint, it appears that from at least 2000 until late in 2015 the “AUTO TRADER” business in Australia was operated by the Trading Post business. In about December 2015, the business was sold to “A P Eagers”. The Respondent appears to have been one of the losing bidders.

Subsequently, in the second half of 2016 (probably not before August 2016), the Complainant acquired the business.

As part of the acquisition, the Complainant became the owner of two registered trade marks in Australia, both for the word “autotrader”:

- Australian Registered Trade Mark Number 1107660 in respect of magazines about vehicles and associated services in International Class 16 and advertising services relating to selling and buying of vehicles in International Class 35; and

- Australian Registered Trade Mark Number 1690991 for a range of goods and services in International Classes 9, 16 and 41 including publishing services for the provision of electronic publications.

Trade Mark Number 1107660 has been registered since April 5, 2006 and Trade Mark Number 1690991 has been registered since May 1, 2015.

There is a dispute between the parties about how well-known the Complainant’s business in Australia is. However, on the Respondent’s own figures it appears that the website at “www.autotrader.com.au” has had between 600,000 and 700,000 total visits each month since April 2016.

The Respondent also operates an online automotive classifieds business in Australia, mainly from its website “www.carsales.com.au”. According to the Respondent’s figures, the Respondent’s website receives between about 12 million and 13 million total visits each month since April 2016.

The Respondent acquired the disputed domain name in June 2016. After initially resolving to the homepage of its website, the disputed domain name has resolved to the Dealer Directory page of the Respondent’s website “www.carsales.com.au”.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered or subsequently used in bad faith.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that the Panel deems applicable.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s name, trade mark or service mark.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a name or a trade mark and, if so, the disputed domain name must be identical or confusingly similar to the name or the trade mark.

The Complainant has proven that it owns the registered trade marks for AUTOTRADER referred to in section 4 above.

On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s trade marks: see for example, GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, WIPO Case No. DAU2002-0001. This is different to the question under trade mark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.

Apart from the second level domain element, “.com.au”, the disputed domain name differs from the Complainant’s registered trade mark only by the addition of the “s” at the end.

The Complainant contends that the disputed domain name is, therefore, identical to the Complainant’s registered trade mark. The Respondent disputes this. It points out that the disputed domain name consists of two ordinary English words, “auto” and “traders” (the plural of “trader”). It says, therefore, that this component of the disputed domain name is simply another plain English word for car dealers. Accordingly, it says that the Complainant cannot “claim blanket rights to this descriptive term”.

The Respondent offers evidence which shows that a Google search for the respective terms returns very different results: the search for “auto trader” essentially returning search results for the Complainant’s business (or related overseas’ businesses); the results for the plural term being for a much more diverse range of traders. The Panel is not willing to accept that the Google search algorithm replicates the way that the public would compare two terms with the latter being based more on recollection of essential features. Contrary to the Respondent’s argument, the Panel considers that there is a higher likelihood that members of the public would confuse the plural term for the singular and vice versa. In any event, however, the test under this element of the Policy requires only a simple visual and aural comparison. As the Complainant points out, the disputed domain name incorporates the whole of the Complainant’s trade mark. The addition of the “s” to the Complainant’s trade mark does not dispel the overall impression of similarity.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s proven trade marks.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances may be situations in which a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trade mark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. Previous panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and the burden of production will shift to the respondent to rebut that prima facie case. See, e.g., GlobalCenter Pty Ltd v. Global Domain Hosting Pty Ltd, supra.

It appears clear from the Complaint that the Respondent is not associated with the Complainant in any way and has not been authorised by the Complainant to use the disputed domain name. On the contrary, the two parties are competitors in the online automotive classifieds business in Australia. The Complainant points out that its predecessors in business commenced using the trade mark long before the Respondent registered the disputed domain name and argues that the Respondent is using the disputed domain name to divert traffic from the Complainant’s website to the Respondent’s website.

As foreshadowed in its rebuttal of the first element under the Policy, the Respondent says that the term “auto traders” simply means “car dealers”. It says it has a long history of registering descriptive domain names both in order to drive traffic to its websites and to develop future products and services. Indeed, as discussed below in connection with the third element of the Policy, the Respondent claims that the disputed domain name was offered to it for purchase as part of a package of four such descriptive domain names. The Respondent points out that it has for many years provided a directory of car dealers (to use a non-contentious term) on its website and argues that the use of the disputed domain name to resolve to that webpage is a good-faith use of the disputed domain name under the Policy as a descriptive use.

The problem is that the expression “auto trader(s)” is not just, or merely, a descriptive expression. In Australia, it is a registered trade mark of the Complainant. Moreover, the Respondent is using the expression, albeit in the plural, in respect of the very services for which the Complainant has its trade mark registered.

Section 122(1)(b) of the Trade Marks Act 1995 (Cth) does provide a defence to infringement that the defendant is using a sign in good faith to indicate “the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services[…]”.

However, an important consideration in assessing whether the use is in good faith is the defendant’s awareness of the registered trade mark and the potential for confusion. It is not necessary for the defence to be excluded that the defendant deliberately or consciously acted to take advantage of any goodwill associated with the trade mark.¹

As the Respondent was a losing bidder when the “Auto Trader” business became available for sale in Australia in 2015, it is difficult to believe that the Respondent did not know of the trade mark usage of the expression “auto trader” in respect of that business when it registered the disputed domain name. Moreover, it appears from the Response that the Respondent’s own market surveys disclosed that “Auto Trader” was operating in the market, although the Respondent says the surveys showed that “Auto Trader” was the smallest of the seven “players” in the market. Some idea of the scale of the respective operations is conveyed by the website visit data referred to in section 4 above.

In this state of the record, the Panel is not willing to find that the Respondent has sufficiently clearly established that it could successfully claim the benefit of the defence provided by section 122(1)(b) of the Trade Marks Act. While there appears to be force in the Respondent’s argument that the term is descriptive, its conversion into a plural by the addition of “s” is simply too thin a reed to differentiate the disputed domain name from the Complainant’s trade mark. It is no part of the Panel’s role to disregard the fact of registration of the Complainant’s trade mark.

It has long been accepted under the Policy, and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), that use of another’s trade mark in a domain name to promote competing goods and services not associated with the trade mark owner is not a use in “good faith” under the Policy.

Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy also.

C. Registered or Subsequently Used in Bad Faith

In contrast to the UDRP, the Complainant must establish that the disputed domain name has been either registered or subsequently used in bad faith by the Respondent under the third requirement of the Policy.

There is a dispute between the parties whether the Respondent registered the disputed domain name in bad faith. The Complainant contends that the Respondent registered the disputed domain name with full knowledge, or constructive knowledge, of the Complainant’s trade marks with the intention of diverting customers from the Complainant’s website to the Respondent’s website. On the other hand, the Respondent points to the descriptive nature of the term, the Respondent’s long-standing practice of registering descriptive terms as domain names to promote its business and says that, rather than seeking out the disputed domain name, the disputed domain name was offered to it as part of a package of four descriptive domain names by its domain name broker for possible acquisition.

However, it is unnecessary to resolve this controversy because under the Policy, unlike the UDRP, it is necessary for the Complainant to prove only use in bad faith; it need not prove registration in bad faith also.

In the present case, the Respondent is using the disputed domain name to redirect potential customers from the disputed domain name to its own online classified business at “www.carsales.com.au” in competition with the Complainant’s business in circumstances where the disputed domain name is confusingly similar to the Complainant’s registered trade marks and, as discussed in section 5B above the Respondent does not have a right or legitimate interest in using the disputed domain name in that connection.

Accordingly, the Panel finds that the Respondent is using the disputed domain name in bad faith under the Policy and, therefore, the Complainant has established the third requirement under the Policy.

6. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <autotraders.com.au>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: June 29, 2017

¹ Anheuser-Busch, Inc v Budějovick Budvar, Národní Podnik [2002] FCA 390 at [216] – [218] (Allsop J).