WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kelley Blue Book Company, Inc. v. CarSales.com Limited

Case No. DAU2017-0025

1. The Parties

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

The Respondent is CarSales.com Limited of Richmond, Victoria, Australia, internally represented.

2. The Domain Name and Registrar

The disputed domain name <kbb.com.au> (the "Domain Name") is registered with Netnames Pty Ltd. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 24, 2017. On August 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed Domain Name. On August 29, 2017 and September 8, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's contact details.

The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au 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 September 12, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was October 2, 2017. On September 13, 2017, the Center received an email communication from the Respondent. On September 14, 2017, the Respondent confirmed that its email of September 13, 2017 can be regarded as the Respondent's complete Response.

The Center appointed Keith Gymer as the sole panelist in this matter on October 3, 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 Kelley Blue Book Company, Inc., a US corporation, with its principal place of business in Irvine, California, and an affiliate of Cox Automotive Australia Pty, Ltd. (owner of the Autotrader brand and operator of the "autotrader.com.au" website), and Manheim Auctions Australia (a market leader in automotive vehicle remarketing services), both having their principal places of business in Altona North, Australia. The Complainant provides advertising and business services related to buying and selling vehicles from its international website at "<www.kbb.com", and also provides consulting services in Australia regarding analysis of vehicle data, development of vehicle valuation services, and improvement to products for valuation in support of its Australian associates.

The Complainant has the following registered and pending trademarks in Australia:
Trademark No. 1. 1164873 for KBB.COM mark, registered March 7, 2007, in Class 35;
Application No. 1. 1865483 for KBB.COM mark, filed August 11, 2017, in Classes 9, 35, 36 & 42;
Application No. 1. 1865482 for KBB mark, filed August 11, 2017, in Classes 9, 35, 36 & 42.

The Complainant also holds numerous other trademark and domain name registrations in various jurisdictions incorporating the KBB mark.

The Respondent is Carsales.com Limited, an Australian business, which provides vehicle sales and information services from its website at "carsales.com.au" and also information and valuation services (along similar lines to the Complainant) from the Respondent's website at "redbook.com.au".

According to the Registrar's records, the Domain Name <kbb.com.au> was registered in the name of the Respondent since at least June 1, 2017. The Domain Name resolves to a landing page stating that "The domain name www.kbb.com.au has been registered by NetNames."

5. Parties' Contentions

A. Complainant

The Complainant bases its case substantially on the following points:

The Domain Name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights

The Domain Name is identical and confusingly similar to the Complainant's mark, because the Domain Name <kbb.com.au> incorporates the Complainant's KBB.COM mark, as registered in Australia, and as used for the Complainant's own primary website, exactly and in its entirety.

The Respondent has no rights or legitimate interests in respect of the Domain Name

There is no evidence that, prior to registering the Domain Name, the Respondent had ever been known, or done business, as "kbb" or as "kbb.com" or as "kbb.com.au".

The letter string "kbb" has no descriptive use or commonly understood meaning apart from its recognition as a source identifier for the Complainant.

The Complainant's first use and first registration of its KBB.COM mark substantially predate any use the Respondent may ever have made of <kbb.com.au> as a trade name, domain name, mark, or as a common name or for a website. The Respondent registered the Domain Name in June 2017, more than 10 years after the Complainant first registered its mark in Australia and more than 20 years after the Complainant began operating its web site at "<www.kbb.com". The Respondent had actual knowledge of Complainant's prior uses owing to the Respondent and the Complainant being in the same business.

The Respondent has no intellectual property rights, and no legitimate interests, in the Domain Name.

The Domain Name was registered in bad faith

The Respondent and the Complainant are in the same business and the Respondent is well aware of the Complainant, its rights, and website, and the Respondent offers similar vehicle valuation services under the name "Redbook". Australian articles respecting car values frequently refer to both the Complainant and the Respondent.

The Complainant is recognized as a world leader in automotive information, articles written and published by the Complainant are frequently re-published on automotive sites in Australia, and its opinions are frequently quoted in relevant Australian articles.

The Respondent itself has published on its Redbook website articles that refer to the Complainant and commented on the Complainant's Australian affiliates in articles referencing the Complainant.

The Respondent purchases online ads for both its Redbook and Carsales websites that are triggered by the key words "kelley blue book" and/or "blue book" so that searches on <google.com.au> for "Kelley Blue Book Australia" result in the display of ads for the Respondent's Redbook site and its Carsales site. (The Complainant's "www.kbb.com" website is extremely popular worldwide and receives 10,000 visits each month from Australian residents seeking information and resources related to automotive vehicles.)

The Respondent has registered, in the Australian country code Top-Level Domain, the Complainant's exact mark corresponding to the exact domain name that Complainant uses in the ".com" Top-Level Domain. The Respondent has done so for the purpose of preventing the Complainant, the owner of the KBB.COM trademark, from reflecting its mark in a corresponding domain name.

The Respondent has engaged in a pattern of intentionally registering domain names that correspond to marks of the Respondent's competitors and others in the automotive vehicle business. Specifically, after the Respondent acquired the domain name <autotraders.com.au>, it was held to have registered and used this in bad faith, with transfer being ordered to the Complainant's affiliate, Cox Automotive Australia Pty. Ltd. (Cox Automotive Australia Pty, Ltd v. CarSales.com Limited / Matt Martin, WIPO Case No. DAU2017-0012).

The Respondent even registered the Domain Name at issue in this proceeding whilst still actively engaged in the foregoing auDRP proceeding with the Complainant's affiliate Cox Automotive Australia Pty. Ltd. This was an intentional tactic, in recognition that the Complainant's focus on the Australian market would present a substantial competitive threat to the Respondent, given the Complainant's worldwide operations and ties to both Manheim and Autotrader in Australia.

Remedy requested

The Complainant requests the transfer of the Domain Name to the Complainant.

B. Respondent

In response to the Complaint, the Respondent merely stated that: "The Respondent to this dispute does not admit the matters contained within the Complaint however, for commercial reasons, does not intend to file a Response."

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant is required to prove:

(i) the Domain Name is identical or confusingly similar to a name (Note 1), trademark or service mark in which the Complainant has rights;
and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (Note 2); ;; and
(iii) the Domain Name has been registered or subsequently used in bad faith.

Note 1

For the purposes of the Policy, auDA has determined that a "name […] in which the complainant has rights" refers to:
(a) the complainant's company, business or other legal or trading name, as registered with the relevant Australian government authority; ;; or
(b) the complainant's personal name.

Note 2

For the purposes of the Policy, auDA has determined that "rights or legitimate interests in respect of the domain name" are not established merely by a registrar's determination that the respondent satisfied the relevant eligibility criteria for the domain name at the time of registration.

The fact that the Respondent has not provided a substantive Response to the Complaint in this case does not relieve the Complainant of the burden of proving its case. In the absence of a Response, paragraph 5(e) of the Rules expressly requires the Panel to "decide the dispute based upon the complaint". Under paragraph 14(a) of the Rules, in the event of such a "default" the Panel is still required "to proceed to a decision on the complaint", whilst under paragraph 14(b) of the Rules it "shall draw such inferences therefrom as it considers appropriate".

Consequently, the Panel must proceed with an assessment of the Complaint on its merits.

A. Identical or Confusingly Similar

The Complainant has demonstrated registered trademark rights in Australia in the mark KBB.COM, which significantly predate the registration of the Domain Name by the Respondent.

It is typically accepted that, for the purposes of the Policy, the domain suffix ".com.au" would be discounted in the consideration of the identity or similarity between a domain name and a name or mark. However, in this case the ".com" element is clearly relevant to the comparison, as the whole of the Complainant's mark is effectively comprised in the Domain Name, with the only distinction being the ".au" country code.

The Panel therefore finds that the Domain Name <kbb.com.au> is essentially identical and confusingly similar to the trademark KBB.COM, in which the Complainant has rights.

The Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The evidence presented by the Complainant that the Respondent did not register the Domain Name innocently on the basis of any prior rights of its own, and that it did not do so in ignorance of the Complainant's rights is overwhelming.

The Respondent itself has made no claim to any alternative bona fide intended use for the Domain Name, merely stating that it admits nothing.

The Panel therefore has no grounds not to accept the Complainant's assertions and evidence, and holds that the Respondent has no genuine rights or legitimate interests in the Domain Name.

The Complainant has therefore also met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered or Subsequently Used in Bad Faith

Similarly, on this factor, the evidence and arguments presented by the Complainant demonstrate plainly that the Respondent registered the Domain Name in full knowledge of, and blatant disregard for, the Complainant's prior rights and reputation in the KBB.COM name and mark, and that it could have had no bona fide purpose for doing so. The Respondent has simply attempted to misappropriate the Complainant's rights and goodwill in its KBB.COM mark, without authorization and evidently just to act as a spoiler to hinder the Complainant's legitimate competitive interests. In the absence of any explanation from the Respondent, the Panel is convinced that the Respondent's conduct falls squarely within the examples of "Registration or Subsequent Use in Bad Faith" given at paragraph 4(b). of Schedule A of the Policy, particularly that the Respondent both "registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name" (cf. Policy 4(b)(ii)) and "registered the domain name primarily for the purpose of disrupting the business or activities of another person" (cf. Policy 4(b)(iii)).

The Panel therefore finds that, on the evidence, the Domain Name has clearly been registered in bad faith.

The Complainant has fulfilled the requirement of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <kbb.com.au> be transferred to the Complainant.

Keith Gymer
Sole Panelist
Date: October 17, 2017