WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kelley Blue Book Company, Inc. v. Jayasheela CA

Case No. D2018-1592

1. The Parties

The Complainant is Kelley Blue Book Company, Inc. of Irvine, California, United States of America (“United States”), represented by Kilpatrick Townsend & Stockton LLP, United States.

The Respondent is Jayasheela CA of Bangalore, Karnataka, India, self-represented.

2. The Domain Name and Registrar

The disputed domain name <kelleybluebookusedcars.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2018. On July 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2018, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Center received an informal communication from the Respondent on July 20, 2018. The Response was filed with the Center on August 7, 2018.

The Center appointed Steven A. Maier as the sole panelist in this matter on August 13, 2018. 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 is a corporation organized under the laws of California, United States. It is a provider of automotive vehicle valuation and related information.

The Complainant is the owner of various trademark registrations comprising or incorporating the mark KELLEY BLUE BOOK, including the following:

- United States trademark number 2679776 for the word mark KELLEY BLUE BOOK, registered on January 28, 2003 in Classes 9, 16 and 35, for goods and services including price guide booklets and websites and databases featuring information relating to buying and selling vehicles;

- India trademark number 1386524 for the word mark KELLEY BLUE BOOK, registered on March 21, 2008, in similar Classes and for similar goods and services as above;

- United States trademark number 2671144 for the word plus design mark KELLEY BLUE BOOK OFFICIAL GUIDE together with a ribbon and seal design, registered on January 7, 2003, in similar Classes and for similar goods and services as above;

- International trademark number 1235285 for a figurative mark comprising a ribbon and seal design bearing the words KELLEY BLUE BOOK OFFICIAL GUIDE, registered on April 15, 2014 in Classes 9, 16, 35, 36 and 42, for similar goods and services as above, and designating a total of 40 countries including India.

The disputed domain name was registered on March 23, 2017.

According to evidence submitted by the Complainant, the disputed domain name has resolved to a website at “www.kelleybluebookusedcars.org” which contained information and third-party website links relating to used car valuation and purchase.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is a recognized world leader in providing automotive vehicle valuation and related information and has done so under the name and mark KELLEY BLUE BOOK for over 90 years. It submits that it has spent tens of millions of dollars in promoting the services provided under its trademarks in the United States in print, online, on radio, on television, though mobile apps and at industry events. The Complainant provides evidence of a website at “www.kelleybluebook.com” since 1999 and more recently at “www.kbb.com” (the Complainant provides evidence of further United States and India registration for the trademark KBB.COM). It asserts that, as a consequence of the matters referred to above, the name and mark KELLEY BLUE BOOK has become a strong source identifier which is exclusively associated with the Complainant by the consuming public.

The Complainant submits that the disputed domain name is identical or confusingly similar to a trademark in which it has rights. It states that the disputed domain name comprises its mark KELLEY BLUE BOOK in its entirety, together with the term “used cars”, which is not only descriptive but also relates to the specific services that the Complainant itself provides.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that its own use of the KELLEY BLUE BOOK name predates the Respondent’s by over 80 years and that the Respondent has no independent trademark rights in that name. The Complainant submits that the Respondent is not using the disputed domain name either for any bona fide commercial purpose or by way of legitimate noncommercial or fair use, because it is using the disputed domain name unfairly to reap commercial gain.

The Complainant submits that the disputed domain name was registered and is being used in bad faith. In this regard, the Complainant exhibits evidence of the Respondent’s website at “www.kelleybluebookusedcars.org” to which the disputed domain name resolved on July 12, 2018. The website is headed “KBBUSEDVEHICLEGUIDE” and contains content and links related to used car valuation and purchase. It includes a feature which compares the Complainant’s guide with another guide, which reproduces the Complainant’s figurative ribbon and seal trademark referred to above.

The Complainant contends that the Respondent’s above website uses the Complainant’s trademarks in connection with the categories of services offered by the Complainant and otherwise misleads Internet users into believing that the website is offered by or associated with the Complainant. The Complainant further contends that the Respondent is unfairly deriving a commercial advantage from its website, which contains links to both the Complainant’s website and those of its competitors. The Complainant submits that the Respondent obtains pay-per-click (or click-through) revenues from the third-party sites to which its website links.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

The Respondent does not directly address the contention that the disputed domain name is identical or confusingly similar to the Complainant’s trademarks. The Respondent asserts, however, that it was not informed by the Registrar that the disputed domain name was in conflict with any existing trademark, and that had it been so informed it would have purchased a different domain name.

The Respondent submits that it has rights or legitimate interests in the disputed domain name because it is making fair use of the disputed domain name for the purpose of a website which compares the Complainant’s services with those of its competitors and redirects Internet users to the websites in question. It states that many other websites offer similar comparison services.

The Respondent makes a similar argument on the question of good faith. It adds that it does not represent anywhere on its website that it is affiliated with the Complainant and that it has now removed the references to “KBBUSEDVEHICLEGUIDE”, which it did not know was a trademark, and the Complainant’s figurative trademark, which had been used to illustrate a post comparing the Complainant’s services with those of a competitor. The Respondent states that it has only monetized its website by using Google pay-per-click advertising and that it does not have control over the content of those adverts. It denies having obtained click-through revenues.

6. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

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

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

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the registered trademark KELLEY BLUE BOOK. The disputed domain name <kelleybluebookusedcars.org> incorporates the Complainant’s trademark in full, together with the dictionary term “used cars” and the generic Top-Level Domain (“gTLD”) “.org”, which is typically to be disregarded for the purposes of comparison. The Panel finds that the term “used cars” is ineffective to distinguish the disputed domain name from the Complainant’s trademark and, therefore, that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent argues that it is making fair use of the disputed domain name by using it in connection with a website which compares the services offered by the Complainant with those of its competitors. The Panel rejects the Respondent’s contention for a number of reasons. First, the Panel finds the disputed domain name to be inherently misleading, in that it comprises the Complainant’s highly distinctive trademark KELLEY BLUE BOOK with a dictionary term describing the very services with which the Complainant is associated. Accordingly, a significant number of Internet users will inevitably assume that the disputed domain name is operated or authorized by the Complainant. Secondly, the Respondent has failed to make clear on its website that it has no affiliation with the Complainant and, on the contrary, has used the Complainant’s trademarks in connection with its website content. Thirdly, the Respondent does not dispute that it has derived pay-per-click revenue from its website, which contains references and links to the Complainant’s competitors as well as to the Complainant.

In the circumstances, the Panel finds that the Respondent has used the disputed domain name to target and to take unfair commercial advantage of the goodwill that attaches to the Complainant’s trademark, which does not give rise to any rights or legitimate interests on the part of the Respondent. The Panel finds accordingly that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Concerning the Respondent’s registration of the disputed domain name, the Panel considers it inconceivable that the Respondent could have registered the disputed domain name without knowledge of, and the intention to refer to, the Complainant’s trademark KELLEY BLUE BOOK. Not only is the Complainant’s trademark highly distinctive, but the Respondent has used the disputed domain name for the purpose of a website relating to used car valuation and sales and which makes specific reference to the Complainant’s services and its trademarks.

There is no responsibility upon a domain name Registrar to inform a registrant that a domain name may be in conflict with existing intellectual property rights and the Respondent’s argument that it was not so informed is of no significance.

So far as the Respondent’s use of the disputed domain name is concerned, the Panel repeats its observations under section B above. The Panel finds that the Respondent has used the disputed domain name, which is inherently misleading, for the purposes of a website which takes unfair advantage of the Complainant’s goodwill to promote third-party services in including those of the Complainant’s competitors and to derive pay-per-click revenue from that activity. Specifically, the Panel finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).

The Panel therefore concludes that the disputed domain name was registered and has been used in bad faith.

7. Decision

For 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 <kelleybluebookusedcars.org> be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 17, 2018