WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
AAC Enterprises LLC v. Whoisguard, Inc. / Zain Venezuela
Case No. D2015-1219
1. The Parties
The Complainant is AAC Enterprises LLC of Metairie, Louisiana, United States of America, represented by Lewis & Lin, LLC, United States of America.
The Respondent is Whoisguard, Inc. of Panama City, Panama / Zain Venezuela of Lancaster, Pennsylvania, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oraclehalos.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 14, 2015. On July 15, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 16, 2015, the Registrar transmitted by email to the Center its verification response registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 21, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 22, 2015.
The Center verified that the Complaint together with the amended 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 July 23, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 13, 2015.
The Center appointed Angela Fox as the sole panelist in this matter on August 25, 2015. 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 manufactures and sells automotive lighting components, including in particular headlights. It is based in the United States. It has been carrying out its activities since at least as early as 2005.
One of the Complainant’s automotive lighting products is marketed under the brand name ORACLE. The ORACLE products include halo headlights and headlight kits, some of which are marketed as ORACLE HALOS. Annexed to the Complaint were details of the Complainant’s ORACLE and ORACLE HALOS products. The Complainant has been marketing products under the ORACLE and ORACLE HALOS trademarks since at least as early as 2005. Its revenues since then have been in the tens of millions of dollars, primarily generated by sales through a website it maintains at “www.oraclelights.com”. Its products are sold throughout the United States and internationally, and its customers number in the hundreds of thousands. It sells hundreds of thousands of units of ORACLE HALOS lights and kits annually. Annexed to the Complaint were copies and print-outs of media coverage relating to the ORACLE and ORACLE HALOS brand.
The Complainant owns United States federal trademark registration No. 4,121,065 for ORACLE in Class 11 covering various types of automotive lighting components, filed on July 8, 2011 and registered on April 3, 2012, with a first use in commerce date of September 9, 2005. Details of this registration were annexed to the Complaint. The Complainant also claims common law rights in ORACLE, ORACLE HALOS and ORACLE HALO KITS arising from nearly 10 years of use.
The Complainant also claims to own 10 domain name registrations including ORACLE, including <oraclelights.com>, <oracleledlights.com>, <oracleheadlights.com>, <oraclelightingtechnology.com> and <oracleledlighting.com>. Since 2005, the Complainant claims to have spent over USD 2 million advertising its ORACLE-branded products online throughout the United States and internationally.
The disputed domain name was registered on November 26, 2014 in the name of a privacy service, who during the proceedings disclosed the registrant’s identity as Zain Venezuela of Lancaster, Pennsylvania. The disputed domain name has been used for a website site ostensibly operated by an anonymous former distributor of the Complainant’s products. The following introductory words on the site, an extract of which was annexed to the Complaint, give a flavour of the contents:
Before Buying from Oracle Lighting – Read This!
- I was a dealer for Oracle Lighting & have done many installs, 1/3 of their halo headlight kits will fail.
- They have truly poor customer service.
- There are more reliable, less expensive alternatives: LED Concepts
The website then lays out the author’s history of installing ORACLE-branded lighting components and dissatisfaction with ORACLE products and customer service. It then introduces LED Concepts, a competitor of the Complainant, from whom the author now buys products, and recommends them as less expensive, better designed and more reliable than the Complainant’s products. The tone of the website is disgruntled and aggrieved, and the Complainant refers to it, with justification, as a “complaint site”.
Since the Complaint was filed, however, the website linked to the disputed domain name no longer appears to be accessible.
5. Parties’ Contentions
The Complainant submits that the disputed domain name is confusingly similar to trademarks in which it has rights, in particular to its registered United States trademark for ORACLE and the trademarks ORACLE HALOS and ORACLE HALO KITS, in which it claims to have common law rights.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known by the disputed domain name, was not authorized by the Complainant to use its trademark in the disputed domain name, has not used the domain name in connection with a bona fide offering of goods or services, and has not made legitimate non-commercial or fair use of it. The Respondent’s website is not purely a complaint site, but rather appears to be a complaint site masquerading as a means to market a competing halo light product offered by a competitor of the Complainant, and is therefore for commercial use. Moreover, the Complainant contends that the use of a domain name that is confusingly similar to the Complainant’s trademark is not a legitimate non-commercial or fair use.
Finally, the Complainant contends that the disputed domain name was registered and had been used in bad faith. It notes that the Respondent claims to be a former distributor of the Complainant, and the Complainant’s trademarks were therefore known to the Respondent prior to registration. The Complainant notes, moreover, that the Respondent appears to have provided false WhoIs details, since the Complainant’s records do not show a distributor by the name Zain Venezuela. The Complainant submits that the Respondent is using the disputed domain name for the purpose of attracting, for commercial gain, Internet users to a website, by creating a likelihood of confusion with the Complainant’s trademark. The Complainant notes that even if the Respondent’s website were a legitimate complaint site, which it disputes because of the promotion of a named competitor, the inevitable consequence of the confusing similarity of the disputed domain name with the Complainant’s trademark will be confusion, as a substantial proportion of Internet users visiting the site will do so expecting to reach a website of, or authorized by, the Complainant. The fact that Internet users may realise their mistake upon reaching the site does not undo the harm already created by their diversion to the Respondent’s site.
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 ORACLE.
The disputed domain name comprises the word “oracle”, a descriptive product indicator relevant to the Complainant’s field of activity, “halos”, and the non-distinctive generic Top-Level Domain suffix “.com”. The element “oracle” is identical to the Complainant’s ORACLE trademark. The descriptive word “halos” is not capable of distinguishing the disputed domain name from the Complainant’s trademark; it merely refers to a type of automotive headlight product in which the Complainant trades. Its presence is in fact likely, if anything, to reinforce the impression that the disputed domain name is in some way connected to or authorised by the Complainant.
It is well-established that descriptive or generic additions, and particularly those that refer to the goods or services with which a trademark is used, do not avoid confusing similarity of domain names and trademarks (see, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254; F. Hoffman-La Roche AG v. IT Developers s.c. Tomasz Kraus, Lukasz Haluch, WIPO Case No. D2006-1547; Wal-Mart Stores, Inc. v Kenneth E. Crews, WIPO Case No. D2000-0580); and Wal-Mart Stores, Inc. v John Zuccarini d/b/a RaveClub Berlin, WIPO Case No. D2002-0950).
The Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
On the website linked to the disputed domain name, the Respondent claims to be a former distributor of the Complainant’s products. He (or she) has been using that website to ventilate grievances about the Complainant’s product quality, design and customer service. At the same time, the website raises to almost equal prominence a specific named competitor of the Complainant, who is described as offering better quality, better designed and more reliable automotive lighting components. As such, the website is not a pure complaint site, incorporating genuine, non-commercial criticism, but is a website intended to promote the business of a named competitor of the Complainant, to the Complainant’s commercial disadvantage. Although the website does not disclose the identity of the operator, its contents implicitly promote the operator’s business as a distributor of the competing products that it extols.
Under paragraph 4(c)(iii) of the Policy, a respondent may have a right or legitimate interest in a disputed domain name if the circumstances suggest that it has been making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In this case, however, the circumstances suggest that the Respondent does intend to gain commercially by promoting the products of a competitor, which the Respondent itself distributes, at the expense of the Complainant whose products and customer service the Respondent harshly criticizes. These activities are carried out by reference to a domain name that is inherently confusingly similar to the Complainant’s trademark and likely to mislead Internet users into believing that they are visiting a website of, authorized by or somehow connected to the Complainant. The Panel finds that the disputed domain name is therefore calculated to mislead Internet users and to tarnish the Complainant’s trademark, with a view to commercial gain for the Respondent as a distributor of the competing products that it praises on the site.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The content of the website at the disputed domain name leaves no doubt that the Respondent was aware of the Complainant’s trademark and that it was that awareness that prompted the registration and use of the domain name.
Further, as the Complainant fairly points out, the Respondent appears to have provided false contact details, or its claim to have been a distributor of the Complainant’s products is false. The Complainant has no record of a distributor whose name corresponds to that of the Respondent.
As noted above, the disputed domain name is inherently confusingly similar to the Complainant’s trademark and is being used to mislead Internet users into visiting a site criticizing the Complainant’s products and praising those of a specific named competitor. The Respondent’s use appears to have been calculated to attract Internet users by creating a likelihood of confusion with the Complainant’s ORACLE mark and then to profit commercially from deterring Internet users from buying the Complainant’s products and instead encouraging them to buy competing products, which the Respondent purportedly stocks, instead. Such conduct is prima facie evidence of registration and use in bad faith under paragraph 4(b)(iv) of the Policy.
The Panel concludes that the disputed domain name was registered and is being used in bad faith.
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 <oraclehalos.com> be transferred to the Complainant.
Date: September 15, 2015