Consumernet, Inc. d/b/a Car Buying Tips
v. Car Buying Tips, Inc. a.k.a. William Dearn
Claim Number: FA0305000158428
PARTIES
Complainant
is Consumernet, Inc. d/b/a Car Buying Tips, Margate, FL (“Complainant”) represented by Nicole M Meyer, of Dickinson Wright PLLC. Respondent is Car Buying Tips Inc. a.k.a
William Dearn, Plymouth, MA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <car-buyingtips.com>,
registered with Go Daddy Software, Inc.
PANEL
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.
Estella
S. Gold as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 22, 2003; the Forum received a hard copy of the Complaint
on May 23, 2003.
On
May 22, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain name <car-buyingtips.com>
is registered with Go Daddy Software, Inc. and that the Respondent is the
current registrant of the name. Go Daddy Software, Inc. has verified that
Respondent is bound by the Go Daddy Software, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
May 27, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of June 16,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@car-buyingtips.com by e-mail.
A
timely Response was received on June 16, 2003. However, the exhibits referenced
in the Response were not received by the Response Deadline. Therefore, the
Response was not in compliance with ICANN Rule #5(a). The Panel, in its
discretion, chooses to consider the Response in this decision.
Complainant’s
timely Additional Submission was received on June 23, 2003.
Respondent’s
timely Additional Submission was received on June 23, 2003.
On July 3, 2003, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Estella S. Gold
as Panelist.
On or about July 11, 2003, Respondent submitted
additional material in HTML code without copy to Complainant. The Panel, in its discretion, chooses not to
consider this Response in this Decision.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
contends that it has established rights in CARBUYINGTIPS.COM for registration
of the mark with the United States Patent and Trademark Office, as well as to
use of the mark in commerce since 1997.
Complainant contends that <car-buyingtips.com>
domain name is identical or confusingly similar to <carbuyingtips.com> mark.
Complainant contends that Respondent’s attempt to show that Respondent
has been commonly known by the domain name prior to registration is without
merit because Complainant has prior rights to the domain name, and Respondent
is not commonly known by the domain name in question. Complainant contends that Respondent is using its domain name, in
direct competition with Complainant, to divert legitimate traffic from
Complainant to Respondent’s site.
Finally, Complainant argues that Respondent’s primary purpose in the
registration of the disputed domain name was to disrupt Complainant’s
established business, thereby acting in bad faith.
B. Respondent
Respondent
contends that Complainant’s mark is too generic to warrant protection under the
UDRP. Respondent contends that it is
making a bona fide offering of goods and services at the disputed name, and it
has legitimate rights or interest in that domain name. Respondent contends that
it did not know of Complainant’s website or mark when it registered the
disputed domain name and that there was no bad faith registration in that
domain name.
C.
Complainant’s Additional Submissions
Complainant
contends that Respondent’s statements regarding his incorporation, state of
incorporation, benefits to visitors at Respondent’s website, initial interest
confusion, and contents of past communications, are either misstated or
false.
D.
Respondent’s Additional Submissions
Respondent
contends that Complainant’s allegations about the operation of search engines,
spamdexing and link usage are misstated or false.
FINDINGS
The Panel finds the following facts:
1. It
is undisputed that Complainant has a federally registered trademark in the name
CARBUYINGTIPS.COM on the Supplemental Register of the United States
Patent and Trademark Office. This
registration was applied for on June 19, 2002 with a Statement of First Use on
June 22, 1998. However, Complainant certifies
date of first use in commerce in 1997 and that date is undisputed by
Respondent.
2. The
Panel finds that the Complainant and the Respondent are in the identical
channels of trade, as competitors, presently.
Respondent operated its business under the fictitious name “Car Buying
Consultants” from April 1, 1992 to December 2, 2001, a somewhat different name
from that of Complainant. Further, this
business was a land-based business through 2001. In May 2002, Respondent opened an online business giving free
auto repair and car buying tips for Internet users in competition with
Complainant. Respondent first
registered the domain name in dispute thereafter. Complainant first registered its domain name CARBUYINGTIPS.COM in
June 1998.
3. The
Complainant’s domain name and the Respondent’s domain name are confusingly
similar.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Complainant contends that the <car-buyingtips.com> domain name is
identical to its CARBUYINGTIPS.COM mark.
The insertion of a hyphen in Complainant’s mark does not differentiate
Respondent’s mark from Complainant’s mark.
See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding
“that the use or absence of punctuation marks, such as hyphens, does not
alter the fact that a name is identical to a mark"); see also InfoSpace.com v. Tenenbaum Ofer,
D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name
‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The
addition of a hyphen and .com are not distinguishing features”). Therefore, the two domain names are held to
be identical and/or confusingly similar.
Complainant maintains that it has established rights
in the CARBUYINGTIPS.COM mark through registration of the mark with the U.S.
Patent and Trademark Office, as well as through use of the mark in commerce
since 1997. Complainant’s registration
is on the Supplemental Register of the United States Patent and Trademark
Office, rather than the Principal Register.
The Supplemental Register under The Lanham Act provides for nonexclusive
use of the registered mark. However,
Complainant does not rely solely upon its Supplemental Registration, but also
supplies evidence of use of the mark in commerce before Respondent’s
usage. Therefore, Complainant has
legitimate interest in the mark because of its early use of the mark in
commerce.
See
Action Sports Videos v. Reynolds,
D2001-1239 (WIPO Dec. 13, 2001) (holding that although Complainant's
registration on the Supplemental Register denotes a descriptive mark without
secondary meaning, Complainant nevertheless had standing to initiate a UDRP
claim because the Policy at paragraph 4(a)(i) requires only that the
Complainant have (mark) "rights" in the disputed domain name, strong or
weak though they be).
Also, see Evans & Sutherland v Real Image, FA 96112 (Nat.
Arb. Forum Jan. 29, 2001) (stating, where Complainant had used its REAL
IMAGE marks since 1997 and had registered the marks on the Supplemental
Register, that “Complainant demonstrated sufficient use of REAL IMAGE and
REALimage as identifying marks associated with Complainant such as would
warrant common law protection”).
The Panel
finds that Respondent’s feigned attempt to appear to be “commonly known by” the
name Car Buying Tips, Inc. does not mean that it is able to avail itself of
Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Furthermore,
Respondent is using its CARBUYINGTIPS.COM domain name to siphon Internet users
from Complainant’s website, which is neither a bona fide offering of services
nor a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶¶ 4(c)(i) or (iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000)
(finding that “[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation of web-site using a domain name which is
confusingly similar to the Complainant’s mark and for the same business”); see
also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or
legitimate interests when Respondent is using a domain name identical to
Complainant’s mark and is offering similar services).
DECISION
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it is Ordered that the <car-buyingtips.com>
domain name be TRANSFERRED from Respondent to Complainant.
___________________________________________________
Estella S. Gold, Panelist
Dated: July 15, 2003
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