Carfax, Inc. v. US Federal Auction
Complainant is Carfax, Inc. (“Complainant”), represented by Keith Berritt of Fish & Richardson P.C., Washington, D.C., USA. Respondent is US Federal Auction (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mycarfax.net> and <mycarfax.org>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 11, 2013; the National Arbitration Forum received payment on January 15, 2013.
On January 16, 2013, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <mycarfax.net> and <mycarfax.org> domain names are registered with Network Solutions, LLC and that Respondent is the current registrant of the names. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@mycarfax.net and postmaster@mycarfax.org. Also on January 17, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant makes the following assertions:
1. The disputed domain names are identical or confusingly similar to Complainant’s CARFAX trademark.
a. Complainant has registered the CARFAX trademark multiple times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,589,438 registered Mar. 27, 1990). See Complainant Exhibit 3.
b. Respondent registered the <mycarfax.net> and <mycarfax.org> domain names on October 16, 2008.
c. Both disputed domain names are confusingly similar to the CARFAX trademark.
1. The addition of the word “my” to Complainant’s registered marks does not negate the confusingly similar nature.
2. The generic top-level domains (“gTLDs”) “.net” and “.org” do not distinguish the disputed domain names from the CARFAX mark.
a. Respondent is not using the domain name in connection with a bona fide offering of goods and services.
1. Respondent is using Complainant’s marks to divert Internet users in search of Complainant’s services.
2. The <mycarfax.net> domain name resolves to a search engine results page, while the <mycarfax.org> domain name resolves to a page advertising Respondent’s used automobiles. Using domain names that are confusingly similar to Complainant’s marks for these purposes is not a bona fide offering of goods or services under Policy ¶ 4(c)(i).
b. Respondent is not legitimately and commonly known by the disputed domain names.
1. The CARFAX mark is a famous and longstanding mark. Its distinctive nature, makes it impossible for Respondent to claim to be “commonly known by” a derivative of the mark.
2. Complainant has never authorized Respondent to use Complainant’s CARFAX mark.
c. Respondent’s use of the disputed domain names is not a noncommercial or fair use.
1. Use of the CARFAX mark to divert Internet users for Respondent’s commercial gain does not constitute noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
a. Respondent was well aware of Complainant’s CARFAX trademark when it registered the disputed domain names.
b. The <mycarfax.net> domain name is not associated with an active website. Such “passive holding” is evidence of bad faith.
c. The <mycarfax.org> domain name resolves to a site that offers used car dealership services. This constitutes competitive disruption and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
d. The combination of the terms CAR and FAX is not a common, generic or descriptive phrase subject to third-party use.
e. Even if Respondent did not have actual knowledge of Complainant’s trademark, it had constructive knowledge due to federal trademark registrations.
Respondent did not submit a Response.
1. Respondent’s <mycarfax.net> and <mycarfax.org> domain names is confusingly similar to Complainant’s CARFAX mark.
2. Respondent does not have any rights or legitimate interests in the <mycarfax.net> and <mycarfax.org> domain names.
3. Respondent registered or used the <mycarfax.net> and <mycarfax.org> domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in the CARFAX trademark pursuant to Policy ¶ 4(a)(i) based on its registration of the mark with the USPTO (e.g., Reg. No. 1,589,438 registered Mar. 27, 1990). See Complainant Exhibit 3. The Panel notes that previous panels have found that a complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). Accordingly, the Panel finds that Complainant has established rights in the CARFAX mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.
Complainant further claims that Respondent’s <mycarfax.net> and <mycarfax.org> domain names are confusingly similar to its CARFAX mark. Complainant notes that both disputed domain names contain Complainant’s mark in its entirety, with the addition of the generic word “my” and the gTLDs “.net” and “.org.” The Panel notes that past panels have found that the addition of a generic word such as “my” is insufficient to create a distinctive domain name. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”). The Panel also notes that the affixation of a gTLD is irrelevant to the confusing similarity analysis, according to past panels. Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). As a result, the Panel concludes that the <mycarfax.net> and <mycarfax.org> domain names are confusingly similar to Complainant’s CARFAX mark, pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent is not commonly known by the disputed domain names and therefore fails to establish rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). The Panel notes that the WHOIS records show “US Federal Auctions” as the registrant of both disputed domain names. The Panel notes that under UDRP precedent, WHOIS information showing no nominal relationship to a disputed domain name is strong evidence that a respondent is not commonly known by a disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). Further, Complainant notes that its CARFAX mark is so widely known that Respondent cannot be commonly known by a derivation of it. The Panel notes that past panels have also supported this proposition when famous marks are involved. See Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003) (“[I]t would be difficult for Respondent to demonstrate that it had rights or legitimate interests in the domain name given Complainant's long and substantial use of its unique and famous XEROX mark.”). Accordingly, the Panel finds that Respondent is not commonly known by <mycarfax.net> or <mycarfax.org> and therefore has no legitimate rights or interests in the domain names pursuant to Policy ¶ 4(c)(ii).
Complainant also argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶¶ 4(c)(i) and (iii). Complainant claims Respondent intends to divert users in search of Complainant’s automobile services to Respondent’s own websites. Complainant notes that the <mycarfax.net> domain name is inactive and resolves to a search engine results page, while the <mycarfax.org> domain name leads to a page that markets used car services similar to Complainant’s own services. The Panel finds that the website resolving from the <mycarfax.net> domain name is not inactive as it contains content and provides search engine services. Nevertheless, the Panel notes that past panels have found that when a disputed domain name is confusingly similar to a mark and leads to a page offering competing or unrelated services provided by a third party, it is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Therefore, the Panel holds that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names, pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent has registered and is using the disputed domain names in bad faith, pursuant to Policy ¶ 4(a)(iii). With respect to the <mycarfax.org> domain name, Complainant claims that Respondent is using the disputed domain name for the purpose of disrupting a competitor, which is evidence of bad faith under Policy ¶ 4(b)(iii). Complainant notes that the <mycarfax.org> domain name resolves to a site that offers used car dealership services, which closely relates to Complainant’s own services. The Panel finds that Respondent’s use here is competing, and finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant also notes that the <mycarfax.net> domain name appears to be inactive, and resolves to a search engine results page. See Complainant Exhibit 5. The Panel notes that previous panels have found inactive resolving websites to be evidence of bad faith registration and use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). The Panel finds that <mycarfax.net> domain name is inactive and therefore finds that Respondent registered and used the <mycarfax.net> domain name in bad faith, pursuant to Policy ¶ 4(a)(iii).
Further, Complainant notes that the combination of the terms CAR and FAX is not a generic phrase due to the fame and distinctiveness of the CARFAX mark. Because past panels have agreed that the reputation of a mark can keep it from being generic, the Panel here still finds that Respondent’s registration and use constitutes bad faith pursuant to Policy ¶ 4(a)(iii). See Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that although a trademark involves words that could be generic in a different context, the reputation of that mark in the field where the mark is associated, means that the intentional registration and use of a misspelling of that mark manifests the intent to capitalize on the mark, and constitutes bad faith).
Complainant also contends that in light of the fame and notoriety of Complainant's CARFAX mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and may find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mycarfax.net> and <mycarfax.org> domain names be TRANSFERRED FROM Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 25, 2013
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