WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Cox Automotive Australia Pty Ltd. v. Auto Dealers Brisbane Pty Ltd.
Case No. DAU2017-0032
1. The Parties
The Complainant is Cox Automotive Australia Pty Ltd. of Altona North, Australia, represented by You Legal Pty Ltd., Australia.
The Respondent is Auto Dealers Brisbane Pty Ltd. of Underwood, Queensland, Australia, internally represented.
2. The Domain Name and Registrar
The disputed domain name <autotradersaustralia.com.au> (the "Disputed Domain Name") is registered with TPP Domains Pty Ltd. dba TPP Internet.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 26, 2017. On October 26, 2017, the Center transmitted by email to TPP Wholesale Pty Ltd a request for registrar verification in connection with the Disputed Domain Name. On October 27, 2017, TPP Domains Pty Ltd. dba TPP Internet transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or ".auDRP"), 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 November 10, 2017. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2017. On November 15, 2017, the Center received an email communication from the Respondent. The Center did not receive a formal response. Accordingly, on December 1, 2017, the Center notified the Parties that panel appointment would commence.
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, and 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 Auto Dealers Brisbane Pty Ltd, a company incorporated in Australia and the registered owner of the Disputed Domain Name. According to the Complaint, the Complainant and the Respondent are competitors. The Respondent did not file a formal 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".
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 has constructive knowledge of the Trade Mark because:
- the Respondent had actual knowledge of the Complainant since the Respondent and the Complainant are competitors;
- the Respondent has no legitimate or legal rights to use the business or trading name "Auto Traders" under Australian law; and
- the Respondent has no intellectual property rights.
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 realize 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, but in its email of November 15, 2017, the Respondent indicated that it was "happy to negotiate a settlement" and that if the Complainant "would like to make an offer to purchase then [the Respondent] will consider your offer seriously."
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 name, 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 or has subsequently been 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 formal Response does not automatically result in a decision in favor 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) provides that the Complainant must establish that the Disputed Domain Name is identical or confusingly similar to a name, trade mark or service mark in which the Complainant has rights.
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 recognizable 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" and the country code Top-Level Domain ".au" do 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 or Used in Bad Faith
Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Disputed Domain Name has been registered or subsequently used 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, including that the Respondent is likely a competitor of the Complainant (or at least operates in the same industry), 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.
In the absence of a formal Response, the Respondent's offer to sell the Disputed Domain Name and any evidence to the contrary, the Panel finds that the Disputed Domain name was registered in bad faith. The Complainant succeeds 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.au> be transferred to the Complainant.
Date: December 22, 2017