WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
TPI Holdings, Inc. v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings
Case No. D2017-0239
1. The Parties
The Complainant is TPI Holdings, Inc. of Atlanta, Georgia, United States of America ("United States"), represented by Kilpatrick Townsend & Stockton LLP, United States.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, the Bahamas / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, the Plurinational State of Bolivia.
2. The Domain Name and Registrar
The disputed domain name <utotrader.com> (the "Domain Name") is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 7, 2017. On February 7, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 10, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on February 15, 2017, 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 February 16, 2017.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2017. In accordance with the Rules, paragraph 5, the due date for the Response was March 13, 2017. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on March 17, 2017.
The Center appointed Jane Seager as the sole panelist in this matter on April 6, 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's predecessor first used the AUTO TRADER mark in 1974 in connection with print publications offering classified advertising and information about automobiles and goods and services related to them throughout the United States. In around July 1996, the Complainant began to use the AUTO TRADER and AUTOTRADER marks to provide advertising and information about automobiles and other related products and services online. The Complainant has continuously operated its website under the <autotrader.com> domain name since at least August 1999.
The Complainant has supplied evidence that it owns the following registered trademarks:
- AUTO TRADER, United States Registration No. 2,390,815, registered on October 3, 2000;
- AUTOTRADER, United States Registration No. 2,381,590, registered on August 29, 2000;
- AUTOTRADER CLASSICS, United States Registration No. 3,667,547, registered on August 11, 2009;
- AUTOTRADER CLASSICS, United States Registration No. 3,667,541, registered on August 11, 2009;
- AUTOTRADERCLASSICS.COM, United States Registration No. 3,768,247, registered on March 30, 2010; and
- AUTOTRADER GROUP, United States Registration No. 4,541,925, registered on June 3, 2014.
The Domain Name was registered on April 8, 2002. It is currently being used to point to a website containing sponsored links, some of which refer to used automobiles.
5. Parties' Contentions
The Complainant states that, due to extensive promotion, popularity, and success, and millions of customers over decades of use, the AUTOTRADER marks and "www.autotrader.com" website have become extremely well known to the consuming public. With hundreds of thousands of visitors to its website each month, the "www.autotrader.com" site is the most visited third party car shopping site in the United States. The Complainant submits that, as a consequence of the publication of tens of millions of advertisements over more than 40 years of use, and the provision of services to hundreds of thousands of customers under the brand, the Auto Trader brand name is extremely well known by both consumers and the automotive trade throughout the United States and is exclusively associated with Complainant and its licensees and affiliates and the high quality services they offer.
Turning to each of the requirements under the Policy, the Complainant asserts as follows:
(i) The Domain Name is confusingly similar to the Complainant's trademark
The Complainant argues that the Domain Name is virtually identical and confusingly similar to the Complainant's AUTO TRADER and AUTOTRADER trademarks in that it uses the term "autotrader", except that the Respondent has omitted the initial "a" in "auto" in order to divert Internet users who mistakenly mistype or misspell "autotrader". According to the Complainant, this is a predictable mis-type in that users of the Internet could easily make such a mistake in trying to reach the "www.autotrader.com" website. The Complainant asserts that this clever attempt to divert Internet users not only shows how confusingly similar the Domain Name is to the Complainant's trademarks, but also reveals the Respondent's bad faith in registering the Domain Name. In the Complainant's opinion, this is a classic case of "typo-squatting".
(ii) The Respondent has no rights or legitimate interests in the Domain Name
The Complainant points out that the Complainant's (and its predecessors') first use and first registration of its AUTO TRADER mark predate any use that the Respondent may have made of "utotrader.com" as a trade name, domain name, trademark, or as a common name. The Complainant argues that any use by the Respondent would have taken place after the Respondent had knowledge of the Complainant's rights, and points out that the Domain Name was registered long after the Complainant first used and registered its AUTO TRADER mark and well after the Complainant registered the domain name <autotrader.com> in May of 1995 and began operating its website at "www.autotrader.com" in August of 1999. The Complainant's website was operational at the time that the Respondent registered the Domain Name, and thus was easily accessible to the Respondent. The Complainant asserts that, because the Complainant has both federal registrations and common law use that predate the Respondent's registration, and because the Respondent is charged with constructive knowledge of the Complainant's prior uses, the Respondent has no intellectual property rights, or legitimate interests, in the Domain Name.
The Complainant states that there is no evidence that, prior to registering the Domain Name, the Respondent had ever been known by, or done business as, "utotrader". Furthermore, the Complainant underlines that the Respondent has used the Domain Name for commercial purposes to reap commercial gain and not for any "fair use".
(iii) The Domain Name was registered and is being used in bad faith
In this regard the Complainant makes the following points:
- The Domain Name is exactly the same as the one used by the Complainant to conduct its online business, except that the Respondent has omitted the initial "a". In the Complainant's opinion, the only explanation for such registration can be to divert Internet users seeking to visit the Complainant's website, but who accidentally miss the "a" or do not hit the "a" key with sufficient pressure when seeking to type the Complainant's domain name. The Complainant submits that the Respondent did not register the Domain Name inadvertently and that registering variants of well-known trademarks with the specific intent to take advantage of inadvertent mistakes is a particularly cunning form of cybersquatting, the epitome of bad faith. The Complainant contends that the Respondent is using this form of trickery to disrupt the Complainant's business and frustrate the Complainant's customers, or potential customers, who, not realizing their mistake, may blame the Complainant for not having the web presence they expected.
- The Respondent has intentionally attempted to attract, for commercial gain, users to its website by creating a likelihood of confusion with the Complainant's trademark as to source, sponsorship, affiliation, or endorsement. The Complainant underlines that on February 2, 2017, the Domain Name redirected to a click-through website, and on other dates it has redirected to a website that is a copy of the website at "www.edmunds.com". The Complainant argues that both websites contain content intended to confuse Internet users.
- The Complainant points out that the pay-per-click website offers links to a variety of websites. In the Complainant's opinion, the Respondent is relying on the trickery of a Domain Name that is virtually identical to the Complainant's trademark to confuse the Complainant's customers or potential customers and divert them to its website. The Respondent intends that such diverted Internet users click on one of the links on its site, thereby enabling the Respondent to collect "click-through" revenues from the operator of the linked site.
- The Complainant states that the Respondent intentionally posts content on its site that is specifically calculated to confuse consumers by displaying both the AUTO TRADER mark and categories consistent with the services offered on the Complainant's website. In this regard, the Respondent's website includes categories consistent with those known by the public to be associated with the Complainant, such as "Autotrader Used Cars", "Auto Trader com", "Autotrader", and "Autotrader com Used Cars", all of which describe services offered by the Complainant.
- By using the Domain Name for the purpose of linking to sites from which the Respondent may obtain "click-through" revenues, the Complainant argues that the Respondent has intentionally attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant's trademarks as to source, sponsorship, affiliation, or endorsement of the Respondent's website or the links on its website. The Complainant points out that the Policy specifically identifies this conduct as evidence of bad faith under Paragraph 4(b)(iv), and "click-through" sites in particular have been determined in many UDRP cases to show a Respondent's bad faith intent to profit.
- As for the website that is a copy of the website at "www.edmunds.com", the Complainant submits that the Respondent offers information regarding vehicles for sale, and confuses consumers by providing services related to, and in part competitive with, the Complainant's services. The Complainant contends that the Respondent is seeking to divert Internet users looking for the Complainant's website to the related competitive site to obtain user information (by having users input their contact information) and also to obtain advertising or lead generation revenue through the site.
- In summary, the Complainant argues that the Respondent registered and is wrongfully using the Domain Name to trade upon and profit from the goodwill that the Complainant has built in its AUTO TRADER marks.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that to obtain the transfer of the Domain Name, the Complainant must prove each of the following three elements:
(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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The standard of proof is on the balance of probabilities (Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Furthermore, paragraphs 10(b) and 10(d) of the Rules provide that the Panel shall ensure that the parties are treated with equality and shall determine the admissibility, relevance, materiality and weight of the evidence.
In addition, paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, does not comply with a provision of, or requirement under, the Rules, the Panel shall draw such inferences therefrom as it considers appropriate.
The Panel notes that the Respondent has failed to respond to the Complaint. The Respondent's failure to respond, however, does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules, see paragraph 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
Taking the aforementioned provisions into consideration, the Panel finds as follows:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Panel to first consider whether the Complainant has established relevant trademark rights. The Complainant has provided evidence of a number of registered trademarks matching or including AUTOTRADER, for example United States Registration No. 2,390,815, registered on October 3, 2000.
As mentioned above, the Panel is also required under paragraph 4(a)(i) of the Policy to examine whether the Domain Name is identical or confusingly similar to the Complainant's trademark. In this regard, the Panel notes that the Domain Name fully incorporates the Complainant's AUTOTRADER trademark, apart from the first letter "a". The Panel agrees with the Complainant that such variation is insufficient to avoid confusion with the Complainant's trademark.
Furthermore, it is widely accepted that the ".com" generic Top-Level Domain ("gTLD") is generally irrelevant for the purpose of assessing identity or confusing similarity between a trademark and a domain name.
The Panel therefore finds that the Domain Name is confusingly similar to the Complainant's trademark. Accordingly, the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a list of non-exhaustive circumstances that may suggest that a respondent has rights or legitimate interests in a domain name, including:
(i) before any notice to the respondent of the dispute, the respondent's 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
Based on the statements and evidence put forward by the Complainant, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the Domain Name and that, as a result of its default, the Respondent has failed to rebut such a showing.
The Respondent cannot be considered to be making a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy referred to above, given that the Domain Name, a clear misspelling of the Complainant's trademark, is pointing to a website containing sponsored links relating to the Complainant's business. Neither can such use be said to be a legitimate noncommercial or fair use of the Domain Name within the meaning of paragraph 4(c)(iii) as the website at the Domain Name is inherently commercial in nature. Furthermore, the Complainant has not authorized the Respondent to make any use of its trademark and it is highly unlikely that the Respondent would be "commonly known" by the Domain Name, as referred to at paragraph 4(c)(ii), given the notoriety surrounding the Complainant's trademark and the fact that the Domain Name is a misspelling of it.
The Panel is also of the view that the Respondent's failure to submit a response is, in the circumstances of this case, also evidence of the Respondent's lack of rights or legitimate interests in the Domain Name. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 ("non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one's own rights").
The Panel therefore finds that the Respondent has no rights or legitimate interests in the Domain Name. As such, the Complainant has satisfied
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, including:
(i) circumstances indicating that the respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the complainant's trademark or service mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent's website or other online 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 the respondent's website or location.
The evidence put forward by the Complainant amply demonstrates the Complainant's notoriety and the extensive use of its trademarks, certain of which pre-date the registration of the Domain Name. The Panel therefore finds, on the balance of probabilities, that the Respondent was aware of the Complainant's rights at the time of registration of the Domain Name, and thus registered it in bad faith seeking to profit from the Complainant's rights. The Panel is not persuaded that "uto" has any distinct meaning, other than as a misspelling of "auto". Under the circumstances, the Panel is of the opinion that the Domain Name was registered for its trademark value, albeit misspelled, and not in relation to any ordinary dictionary meaning.
The Panel further finds that the Respondent's use of the Domain Name, which incorporates the Complainant's trademark in its entirety except for the omission of the first letter "a", for a parking page containing sponsored links, including links related to the Complainant's field of business is, under the circumstances, evidence of bad faith. Whether the links are automatically generated or not is irrelevant as a domain name registrant is generally responsible for the content appearing on the associated website (see paragraph 3.8 of the WIPO Overview 2.0). The Panel therefore finds that 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 trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website, in accordance with paragraph 4(b)(iv) of the Policy.
Finally, the Panel finds that the Respondent's use of a privacy service to mask its details in the WhoIs is further evidence of the Respondent's bad faith. In this instance this appeared to be intended to frustrate the enforcement of the Policy and so further underlines the Respondent's bad faith.
The Panel therefore finds that the Respondent registered and is using the Domain Name in bad faith, in accordance with paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <utotrader.com>, be transferred to the Complainant.
Date: April 16, 2017