WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cox Automotive Australia Pty Ltd. v. Peter Nutley
Case No. D2017-2098
1. The Parties
The Complainant is Cox Automotive Australia Pty Ltd of Altona North, Victoria, Australia, represented by You Legal Pty Ltd., Australia.
The Respondent is Peter Nutley of Underwood, Queensland, Australia.
2. The Domain Name and Registrar
The disputed domain name <autotradersaustralia.com> (the “Disputed Domain Name”) is registered with TPP Wholesale Pty Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2017. On October 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 3, 2017, the Registrar transmitted by email to the Center its verification response disclosing 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 November 3, 2017 noting that the named Respondent differs from the Disputed Domain Name registrant details provided as an annexure to the Complaint, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 7, 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 November 8, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2017.
The Center appointed John Swinson as the sole panelist in this matter on December 8, 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 is Cox Automotive Australia Pty Ltd, a company incorporated in Australia providing automotive services and solutions.
The Complainant owns several registered Australian trade marks, including trade mark number 1690991 for AUTOTRADER registered on May 1, 2015 and entered on the Register on July 20, 2016, and trade mark number 777632 for the following device mark registered on November 9, 1998, and entered on the Register on May 16, 2001:
(the “Trade Mark”).
According to the Complaint, the Complainant’s predecessor began using the Trade Mark in Australia as early as 1989 in connection with the offering of print publications containing information about vehicles, products and services related to them, and vehicle advertising services.
The Complainant owns a domain name which incorporates the Trade Mark, being <autotrader.com.au> (the “Complainant’s Website”). According to the Complaint, the Complainant registered and began operating its website in 2000.
The Respondent is Peter Nutley, an individual of Australia and the registered owner of the Disputed Domain Name. According to the Complaint, the Respondent is affiliated with the company Auto Dealers Brisbane Pty Ltd of Capalaba, Queensland, Australia (“Auto Dealers Brisbane”) by virtue of being the contact for the registration of the similar domain name <autotradersaustralia.com.au>. However, the Respondent did not file a Response, and consequently little information is known about the Respondent.
The Disputed Domain Name was registered on November 9, 2015. According to the Complaint, there is no evidence of use of the Disputed Domain Name since its registration. At the time of this decision, the Disputed Domain Name does not point to an active website.
The Complainant sent cease-and-desist letters to the Respondent concerning the Disputed Domain Name on June 7, 2017, June 30, 2017 and on July 14, 2017 by registered post. According to the Complaint, the Respondent did not reply to any of these letters.
5. Parties’ Contentions
The Complainant makes the following submissions.
Identical or Confusingly Similar
The Disputed Domain Name is confusingly similar to the Trade Mark as it uses the term “autotrader” exactly and in its entirety.
The Respondent has added the letter “s” to the Trade Mark to make it a plural in order to divert Internet users who mistakenly mistype or misspell “autotrader”. The mistyping of the Trade Mark is predictable in that an Internet user could easily make such a mistake in trying to reach the Complainant’s Australian website.
The Respondent has also added the term “Australia” to the Trade Mark to indicate the territory in Australia. The addition of “Australia” to the Trade Mark in the Disputed Domain Name does not distinguish the Disputed Domain Name and the Respondent’s business from the Complainant’s. Rather, it aligns with the Complainant’s Website and business, being an Australia-wide business.
Rights or Legitimate Interests
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. There is no evidence that, prior to registering the Disputed Domain Name, that the Respondent had ever been known, or done business, as “autotradersaustralia.com.au” (presumably the Complainant intended to refer to “autotradersaustralia.com”).
There is no evidence of use of the Disputed Domain Name by the Respondent since its registration on November 9, 2015.
The Disputed Domain Name was registered long after registration of the Trade Mark, and after registration of the Complainant’s Website which the Complainant has been operating since 2000.
The Respondent registered and is wrongfully maintaining the Disputed Domain Name to trade upon and profit from the goodwill that the Complainant has built in the Trade Mark.
Registered and Used in Bad Faith
The Complainant’s Website has long been operating and the Trade Mark is well-known among the consuming public and the automotive vehicle trading industry.
According to the Complaint, the Complainant’s Website has received over 14 million visitors in the past five years. The Complainant and its predecessors have served hundreds of thousands of customers seeking vehicle classified advertising services under Trade Mark.
By registering the Disputed Domain Name, the Respondent registered a confusingly similar domain name to that used by the Complainant for the Complainant’s Website.
The Complainant wrote to the Respondent on three occasions notifying the Respondent of its Complaint regarding the Respondent’s ownership of the Disputed Domain Name and requesting that the Respondent transfer the Disputed Domain Name to the Complainant. At the date of the Complaint, no response has been received by the Complainant from the Respondent.
The Complainant believes that the Respondent registered a variant of the well-known Trade Mark with the intent to take advantage of inadvertent mistakes by Internet users. This is evidence of bad faith registration, and specifically, of cyber-squatting. This conduct disrupts the Complainant’s business and frustrates the Complainant’s customers or potential customers who do not realise their mistake and are apt to blame the Complainant for not having the web presence expected upon reaching the landing page.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the Disputed Domain Name is identical or confusingly similar to a 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 and is being used in bad faith.
The onus of proving these elements remains on the Complainant even though the Respondent has not filed a Response.
The Respondent’s failure to file a Response does not automatically result in a decision in favour of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org, WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondent’s default.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to the Trade Mark.
The Disputed Domain Name adds the letter “s” to the Trade Mark to make the singular term plural. It is well established that this is considered to constitute confusing similarity (see section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
Further, the addition of the geographical term “Australia” does not prevent a finding of confusing similarity under this element as the Trade Mark is recognisable within the Disputed Domain Name (see section 1.8 of the WIPO Overview 3.0).
The Panel considers that the Disputed Domain Name is confusingly similar to the Trade Mark.
In this case, the generic Top-Level Domain “.com” does nothing to detract from this similarity.
The Complainant is successful on the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant is required to make out a prima facie case showing that the Respondent lacks rights or legitimate interests.
The Panel finds that the Complainant has made out a prima facie case. This finding is based on the following:
- The Panel finds that there is no evidence that the Respondent has been commonly known by the Disputed Domain Name or the Trade Mark, or has registered or common law trade mark rights in relation to the Trade Mark.
- The Respondent has not used, or made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. At the time of this decision, the Disputed Domain Name does not point to an active website and according to the Complaint, there has never been an operational website at the Disputed Domain Name. Despite the fact that the Trade Mark is somewhat descriptive, the Panel accepts the Complainant’s assertion that the Respondent registered and is using the Disputed Domain Name to take advantage of the goodwill and reputation of the Trade Mark. In the circumstances, this is not a bona fide use of the Disputed Domain Name under the Policy.
The Respondent had the opportunity to demonstrate his rights or legitimate interests, but did not do so. As such, the prima facie case established by the Complainant has not been rebutted and the Complainant succeeds on the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent has registered and is using the Disputed Domain Name in bad faith.
According to the Complaint, the Complainant registered and has been operating the Complainant’s Website since 2000. The Complainant has provided evidence that it has developed goodwill and brand-recognition in its Trade Mark.
The Disputed Domain Name was registered on November 9, 2015.
In light of the reputation of the Trade Mark and based on the evidence provided by the Complainant, it is probable that the Respondent had knowledge of the Trade Mark at the time of acquiring the Disputed Domain Name. Here, the Panel can reasonably infer that the Respondent sought to take advantage of the reputation of the Trade Mark, and acquired the Disputed Domain Name because of this reputation.
The Panel considers that the Respondent’s non-use of the Disputed Domain Name does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of the WIPO Overview 3.0). Taking into consideration other factors such as the failure of the Respondent to submit a Response and the implausibility of any good faith use to which the Disputed Domain Name may be put, given that the Respondent is affiliated with one of the Complainant’s competitors and the assertions made in the Complaint, the Panel finds on balance that the likely effect of the Respondent’s registration and use of the Disputed Domain Name was to disrupt the Complainant’s business. This is evidence of bad faith registration and use (see paragraph 4(b)(iii) of the Policy).
In light of the above, and in the absence of a Response and any evidence rebutting bad faith registration and use, the Panel finds that the Complainant has succeeded on the third element 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 Disputed Domain Name <autotradersaustralia.com> be transferred to the Complainant.
Date: December 22, 2017