WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
DealerX Partners, LLC v. Domain Manager, Visionamics/Citytwist Inc. / Lyndon Griffin
Case No. D2017-1680
1. The Parties
Complainant is DealerX Partners, LLC of Key Biscayne, Florida, United States of America, represented by Phillips Ryther & Winchester, United States of America.
Respondent is Domain Manager, Visionamics/Citytwist Inc. of Boca Raton, Florida, United States of America / Lyndon Griffin of Boca Raton, Florida, United States of America, internally represented.
2. The Domain Names and Registrars
The disputed domain name <conquestautomotive.com> is registered with Domain.com, LLC. The disputed domain names <conquest.email> and <conquest.marketing> are registered with eNom, Inc. The disputed domain names are collectively referred to herein as the "Domain Names," and the registrars are collectively referred to herein as the "Registrars."
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 30, 2017. On August 31, 2017, the Center transmitted by e-mail to the Registrars a request for registrar verification in connection with the Domain Names. On August 31, 2017, the Registrars transmitted by e-mail to the Center their verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 6, 2017. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2017. On September 18, 2017, Respondent filed a request for extension of the Response due date pursuant to paragraph 5(e) of the Rules. The Response due date was accordingly extended to November 14, 2017. The Response was filed with the Center on November 14, 2017.
The Center appointed Robert A. Badgley, M. Scott Donahey and Richard G. Lyon as panelists in this matter on December 13, 2017. The Panel finds that it was properly constituted. Each member of 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
Complainant describes itself as a specialist in "digital marketing for automobile dealers." According to the Complaint, Complainant "has developed a patented group of software programs that enables automotive dealers to maximize their online advertising dollars by strategically identifying and targeting ready-to-buy consumers and measuring the efficacy of such advertising."
According to Complainant, its offerings "include a suite of products sold under the trademark CONQUEST SERVICE®, which [Complainant] first used in 2009 and for which [Complainant] obtained a federal trademark registration in 2011." Complainant alleges that it had been offering this product "for several years before companies such as Respondent entered the market."
Complainant alleges that it "expanded its product offerings to include CONQUEST PAY PER CLICK®, a product designed to gain impression share by ensuring that shoppers in the market for a specific automobile are delivered advertising related to that specific automobile promoting [Complainant's] client's same-brand dealership, which [Complainant] first used in 2009, applied to register in 2011, and received registration for in 2013, and CONQUEST RETARGETING®, a product designed to identify consumers shopping for automobiles and auto service from same-brand dealerships that compete with [Complainant's] client and deliver advertising to such shoppers, which [Complainant] first used in 2009, applied to register in 2016, and received registration for in 2017."
Complainant's main website is located at "www.dealerx.com", where, according to the Complaint, Complainant "advertises CONQUEST SERVICE®." Complainant annexes to the Complaint an August 29, 2017 screenshot of this website, where there is one reference to CONQUEST SERVICE – with a "TM" sign rather than a "®" sign following the mark – among the several website pages annexed to the Complaint. The website annexed by Complainant shows several references to Complainant's name (DealerX).
As was noted in the Response – but omitted from the Complaint – there is currently a lawsuit pending in the United States District Court for the Northern District of Illinois, filed in 2017, in a case styled DealerX v. vAuto, Inc. This suit apparently (based on allegations in the Response) relates to a petition, filed in 2016, by an entity called "vAuto, Inc." (so far as the record reflects, unrelated to Respondent) with the United States Patent and Trademark Office's Trademark Trial and Appeal Board, seeking cancellation of the CONQUEST SERVICE mark on the grounds that the mark is merely descriptive, generic, and not used in commerce.
Respondent describes itself as a 15 year-old company bearing the name CityTwist "that has been engaging in what has been commonly known as conquest marketing since its inception in 2003." According to Respondent, the term "conquest" is a common term in the advertising jargon of the automotive industry. The term refers to one manufacturer attracting as a new customer the owner of a rival manufacturer's car. Respondent annexed to the Response some evidence that the term "conquest" carries this meaning within the marketing circles of the automotive industry.
The Domain Name <conquestautomotive.com> was registered on July 10, 2012. Respondent states that it first used the Domain Name <conquestautomotive.com> in January 2014 to host a website selling "digital marketing services." According to Respondent, "Conquest Automotive was a trade name used by CityTwist for a particular division of digital automotive conquest marketing services from as early as January of 2012." A CityTwist media kit from 2012 is annexed to the Response in corroboration of this assertion.
As of February 15, 2014, the Domain Name resolved to a website featuring the banner "CityTwist Conquest Automotive". Elsewhere on the site, the term "Conquest Automotive" is used without reference to CityTwist. The site purports to offer low-cost marketing services to automobile dealers: "The lowest marketing cost per car sold in the market today."
One service offered at Respondent's site as of February 2014 is described under the heading "Target In-Market Buyers" as follows: "Using proprietary data and technology, Conquest Automotive identifies 'in market' consumers in your primary market area who are likely to purchase a car in the next 3-6 months." Respondent offered another service at the site, under the heading "Verified Sales Reports," described as follows: "Conquest Automotive provides dealers true [return on investment] with 3rd Party Campaign Evaluation Reports...exactly matching emails delivered to DMV [Department of Motor Vehicles] registrations."
On January 9, 2014, a representative of Respondent ("DJ") sent an email to a representative of Complainant ("JT") in which the former boasted of a "new website exclusive to Conquest Automotive". Respondent's representative DJ provided in that email a link to the website at the Domain Name <conquestautomotive.com> and asked Complainant's representative JT to call him. DJ also asked JT whether he was going to be attending the upcoming convention of the National Automobile Dealers Association ("NADA"). There is nothing in the record indicating that Complainant took any action regarding this Domain Name and Respondent's use of the term "Conquest Automotive" in this January 2014 exchange. (As will be discussed below, two and a half years passed between this email and Complainant's cease-and-desist letter to Respondent.) Complainant also alleges that various representatives of Respondent made contact with Complainant's representatives at various times, though the nature of these interactions is not discussed in any detail.
The domain names <conquest.email> and <conquest.marketing> were registered on August 28, 2014. So far as the record in this case indicates, these Domain Names have not resolved to websites related to assisting automobile dealers in their marketing efforts. Rather, the Domain Names resolve to parking pages where sundry hyperlinks appear, leading the Internet user to sites related to penny stocks, online games, the Dodge Viper automobile, and other sites.
On June 28, 2016, Complainant's counsel sent Respondent a cease-and-desist letter which did not make specific reference to any of the Domain Names, but which addressed Respondent's website content. In that letter, Complainant's counsel stated, among other things:
"[Complainant] demands that Conquest Automotive. (i) immediately cease and desist from use of the protected phrases "CONQUEST SERVICE", "CONQUEST PAY PER CLICK"" or any substantially similar name, including, but not limited to, "CONQUEST AUTOMOTIVE" in all marketing materials, advertisements, adwords, websites, social media, products, services, vehicles, tools, signage or other materials; (ii) immediately destroy or relinquish any materials, websites, and/or domain names; and (iii) desist from infringing on [Complainant's] intellectual property rights in the future."
Respondent did not answer this cease-and-desist letter. Respondent did, at some point thereafter, change its website to remove references to "CityTwist" and retained its references to "Conquest Automotive" as its business identifier.
5. Parties' Contentions
Complainant asserts that it has satisfied all three elements required under the Policy for a transfer of each of the Domain Names.
Respondent disputes Complainant's contentions. Among other things, Respondent denies that it had any knowledge of Complainant's alleged mark CONQUEST SERVICE at the time it registered the Domain Names, asserts that Complainant has no trademark rights in the word "conquest" standing alone, and asserts that Respondent is commonly known by the Domain Name <conquestautomotive.com>.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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 requirements of paragraph 4(a) of the Policy are conjunctive; for each of the Domain Names, all three elements must be proven to obtain a transfer.
A. Identical or Confusingly Similar
Because of the Panel's disposition of the "rights or legitimate interests" issue below, the Panel does not need to decide the issues whether Complainant has rights in any trademark, and whether any of the Domain Names are confusingly similar to any such marks.
B. Rights or Legitimate Interests
For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] 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 trademark or service mark at issue.
The Panel concludes that Respondent has a legitimate interest in respect of each of the Domain Names. First, with respect to the Domain Name given the most focus by the Parties, <conquestautomotive.com>, the Panel finds that Respondent has been commonly known by the Domain Name within the meaning of Policy paragraph 4(c)(ii), quoted above for several years prior to notice of this dispute.
The Panel first notes Respondent's flat denial of any knowledge that Complainant was using CONQUEST SERVICE as a trademark when Respondent registered any of the Domain Names. The Panel finds this denial plausible, in view of the lack of evidence in the record that Complainant had actually been using CONQUEST SERVICE in commerce as a source identifier for its product. On the contrary, Complainant's website (as of August 29, 2017) appears to use Complainant's company name, DealerX, as a trademark far more extensively than it uses CONQUEST SERVICE, which appears once on the site as presented in evidence.
The Panel also credits Respondent's assertion – supported with evidence – that the term "conquest" in the area of automobile marketing is a common term to describe luring a customer loyal to one car make to but a different car make. Moreover, even if Complainant could show that it was using CONQUEST SERVICE as a mark in commerce such that Respondent should have been aware of that mark, it bears noting that Complainant has no rights in the mark CONQUEST standing alone.
In addition, the evidence shows without contradiction that Respondent had been using CONQUEST AUTOMOTIVE extensively in its media kits in 2013 and thereafter. These media kits, as well as other materials annexed to the Response, show that Respondent had attracted numerous auto dealerships as customers for Respondent's CONQUEST AUTOMOTIVE services. (Whether Respondent can actually claim trademark rights in CONQUEST AUTOMOTIVE is not an issue before this Panel, and is not an issue necessary for the determination whether Respondent has been commonly known by the Domain Name under Policy paragraph(c)(ii).)
The Panel therefore concludes that Respondent has been commonly known by the Domain Name <conquestautomotive.com>. As such, Respondent has a legitimate interest in respect of that Domain Name.
With respect to the other two Domain Names, <conquest.email> and <conquest.marketing>, the Panel also concludes that Respondent has a legitimate interest in each of these Domain Names. Although Respondent apparently has not, in the three years since registering them, made any attempt to link these Domain Names to the "conquest automotive" part of Respondent's business, the Panel concludes that the term "conquest" is an ordinary dictionary term and may be registered legitimately by anyone as a domain name as long as no infringing use is being made of the domain name under the Policy. Here, Complainant cannot claim any trademark rights to the term "conquest," standing alone, in connection with a parking page offering sundry hyperlinks unrelated to automotive industry marketing methods.
The Panel underscores here that its findings and conclusions pertain to the claims made under the Policy, and that no conclusions are drawn here in connection with any possible claims for trademark infringement or unfair competition under the United States Lanham Act or otherwise.
C. Registered and Used in Bad Faith
The Panel need not decide the "bad faith" issue, having concluded above that Respondent has a legitimate interest in each of the Domain Names.
D. Reverse Domain Name Hijacking
Respondent has requested that the Panel declare Complainant to have engaged in Reverse Domain Name Hijacking ("RDNH"). Respondent raises a number of points in support of this request, several of which the Panel views as out of bounds because they do not bear on Complainant's decision to initiate the instant proceeding and pursue it in the manner Complainant did so. In any event, the Panel concludes that a finding of RDNH is warranted here.
Paragraph 15(e) of the Rules provides that, if, "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding." According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.16, one of the reasons articulated by prior panels as a basis for an RDNH finding includes "the provision of intentionally incomplete material evidence – often clarified by the respondent."
The foregoing basis for RDNH is justified in part by the requirement that, in its Complaint, as required by paragraph 2(b)(xiii) of the Rules, Complainant "certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, […]".
Here, we have a prime example of material evidence omitted from the Complaint, viz., the fact that there is a cloud over the very trademark (CONQUEST SERVICE) upon which Complainant relies in its effort to wrest the Domain Names from Respondent. As noted above, legal proceedings are afoot to cancel the registration of that mark, including arguments made by the party in that case that the mark is generic and has been abandoned by Complainant. Nonetheless, Complainant pressed ahead with its UDRP Complaint with no mention of this fact.
The Complaint also alleges, without evidence, that its mark has acquired renown. Complainant's essential argument is that Respondent cannot possibly have a legitimate interest in the Domain Names because: Complainant holds a registered mark, and any use of "conquest" in the automotive software field is trademark infringement and per se illegitimate. This position has been roundly rejected by the Panel in this case, based in part on the fact (also undisclosed in the Complaint) that the word "conquest" has a special meaning within the argot of automotive marketing.
In the present circumstances, with a Complainant – represented by counsel – advancing a very weak argument and omitting material information, the Panel concludes that Complainant has abused this administrative proceeding.
For the foregoing reasons, the Complaint is denied. The Panel also finds that this Complaint was brought in bad faith and constitutes Reverse Domain Name Hijacking.
Robert A. Badgley
M. Scott Donahey
Richard G. Lyon
Date: December 26, 2017