DR Media Holdings, LLC v. SHIKHER DUBEY
Claim Number: FA1805001788595
Complainant is DR Media Holdings, LLC (“Complainant”), represented by Jason M Koransky of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is SHIKHER DUBEY (“Respondent”), represented by Vineesh Kedaram of VIU Partners, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cardealerrater.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 29, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cardealerrater.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 June 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 29, 2018 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@cardealerrater.com. Also on June 4, 2018, 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.
A timely Response was received and determined to be complete on June 27, 2018.
Complainant’s Additional Submission was received on July 2, 2018, and it was timely.
On July 3, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, DR Media Holdings, LLC, is a wholly-owned subsidiary of Cars.com, LLC and owns and operates DealerRater, which is the Internet’s premier source for car dealership and service center ratings. Complainant uses its <dealerrater.com> domain name and DEALERRATER mobile software application to host a platform for consumer-posted reviews of car dealerships and service centers located in Canada and the United States. Complainant established rights in its DEALERRATER mark through its registration of the mark with various trademark authorities, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,885,725, registered Dec. 7, 2010). See Compl. Ex. B. Respondent’s <cardealerrater.com> domain name is confusingly similar to Complainant’s DEALERRATER mark because it merely adds the generic term “car” and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent does not have rights or legitimate interests in the <cardealerrater.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its DEALERRATER mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “SHIKHER DUBEY” as the registrant. See Amend. Compl. Ex. A. Respondent is not using the <cardealerrater.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to resolve to a website that provides competing services that are identical to those offered at Complainant’s website. See Compl. Ex. E. Further, Respondent’s <cardealerrater.com> website features information that is copied from Complainant’s own website. Id.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Further, Respondent attempts to create confusion with Complainant’s DEALERRATER mark to attract Internet users and commercially benefit.
B. Respondent
i) Respondent registered the <cardealerrater.com> domain name on October 8, 2015. See Resp. Annex A. Respondent’s rights in the disputed domain name predate Complainant’s rights in the DEALERRATER mark because Complainant’s registration of the DEALERRATER mark was not registered in Respondent’s resident country, India, until 2017.
ii) Respondent has rights and legitimate interests in the <cardealerrater.com> domain name. Respondent has invested more than $100,000 in the promotion and advertisement of its website and the website is the first and exclusive website of its kind in India. Further, as of the filing date of this UDRP action, Respondent’s and Complainant’s website are substantially different.
iii) Respondent did not register or use the disputed domain name in bad faith. Respondent did not have knowledge of Complainant’s DEALERRATER mark when Respondent registered the disputed domain name. Respondent’s <cardealerrater.com> website was accessible in India beginning in December 2015 whereas Complainant’s <dealerrater.com> website was not accessible in India until March 2017.
iv) Complainant’s failure to provide its August 30, 2016 letter constitutes concealing of a material fact.
v) Complainant’s current UDRP complaint should be dismissed on account of an equitable defense such as laches because Respondent made changes to its website at the disputed domain name after receiving the August 30, 2016 letter and Complainant never sent a follow-up demand.
vi) Complainant engaged in reverse domain name hijacking by filing this case.
C. Additional Submissions
Complainant’s Additional Submission
i) Respondent fails to rebut that Complainant’s rights to the DEALERRATER mark pre-date Respondent’s registration and use of the disputed domain name:
- Complainant has used its DEALERRATER mark on its <dealerrater.com> website throughout the world, including in India, since 2003 — i.e., long prior to Respondent’s registration of the disputed domain name on October 8, 2015, or Respondent’s purported filing of its trademark application for CARDEALERRATER in India on December 27, 2016. See Exhibit H, Declaration of Brad Walker at ¶ 2.
- Complainant’s website was temporarily inaccessible to consumers in India from May 16, 2016, to March 14, 2017, due to a distributed denial-of-service (“DDOS”) attack. With the exception of that short period of time, <dealerrater.com> website has been continuously accessible to consumers in India since 2003. See Exhibit H, Declaration of Brad Walker at ¶¶ 2, 3.
-As set forth in Exhibit B to the Amended Complaint, Complainant owns rights to the DEALERRATER mark in numerous countries and jurisdictions throughout the world such as the United States, Canada, E.U etc. which were filed long prior to Respondent’s registration of the disputed domain name on December 27, 2016.
-Notwithstanding Respondent’s claim that it filed an application to register CARDEALERRATER and Design in India prior to Complainant’s filing of an application to register DEALERRATER in India, the case law is clear that Complainant’s prior use of its DEALERRATER mark on its website, and its ownership of prior registrations for DEALERRATER in numerous countries and jurisdictions throughout the world, are sufficient grounds for the Panelist to find that the disputed domain name is confusingly similar to Complainant’s DEALERRATER mark.
ii) Respondent’s introduction of Complainant’s August 30, 2016 demand letter supports a finding that Respondent has no rights or legitimate interests in the disputed domain name, and registered and is using the disputed domain name in bad faith:
- Complainant’s August 30, 2016 letter directly contradicts Respondent’s repeated claims that “Respondent had no knowledge of the Complainant’s website www.dealerrater.com until a letter was sent to them because the letter demonstrates the numerous ways in which Respondent laboriously copied the DEALERRATER logo design and content from the <dealerrater.com> website, including, among other things, copying the “Opt Out” portion of the privacy policy so indiscriminately that Respondent also copied a hyperlink directing visitors to Respondent’s website to Complainant’s website. See Annexure D to Respondent’s Response. Complainant’s August 30, 2016 letter therefore supports a finding that Respondent lacks a legitimate interest in the disputed domain name and registered and is using the disputed domain name in bad faith.
iii) Respondent’s claim that Complainant’s failure to provide its August 30, 2016 letter somehow constitutes concealing of a material fact is without merit because (a) the transmission of a cease-and-desist letter is not a prerequisite to proving the elements of a UDRP complaint; and (b) the letter supports a finding that Respondent lacks a legitimate interest in the disputed domain name and registered and is using the disputed domain name in bad faith because it conclusively demonstrates that Respondent was aware of Complainant’s <dealerrater.com> website and DEALERRATER logo design mark long before Respondent received the letter on August 30, 2016.
iv) Respondent’s apparent assertions of the equitable defenses of laches and unclean hands are without merit.
v) Respondent makes a false, malicious, and unsupported claim that Complainant fabricated documents submitted with its amended Complaint.
- Respondent appears to argue that because it allegedly made changes to its website at the disputed domain name after receiving the August 30, 2016 letter, and Complainant never sent a follow-up demand, Complainant’s current UDRP complaint should be dismissed on account of an equitable defense such as laches. However, the equitable defenses of laches, estoppel, and acquiescence are inapplicable to UDRP proceedings.
- Respondent likewise asserts, without support, that Complainant has “tainted hands” or, presumably, that he has meritorious grounds for the equitable defense of unclean hands, due to the fact that Complainant did not attach the August 30, 2016, letter to its initial filing. The UDRP does not expressly authorize such a defense, and Respondent fails to cite a single case in which a panel has denied a UDRP complaint based on unclean hands. Complainant likewise has not found any such decisions.
vi) Respondent cites several cases to support its arguments. Each of them is easily distinguishable from the case at hand and is inapposite to the facts of this case.
vii) Complainant has not engaged in reverse domain name hijacking: The evidence in this case conclusively demonstrates that Respondent was not only aware of Complainant’s rights in DEALERRATER, but also directly targeted and copied Complainant’s <dealerrater.com> website prior to registering and using the disputed domain name. Moreover, Respondent cannot demonstrate reverse domain name hijacking because Complainant has satisfied the requisite elements of its UDRP claim.
1. Complainant has used its DEALERRATER mark on its <dealerrater.com> website throughout the world, including in India, since 2003.
2. Complainant established rights in its DEALERRATER mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,885,725, registered Dec. 7, 2010).
3. Complainant filed trademark applications for the mark DEALERRATER (word) under Application no. 3552619 in class 35 and 42 and for the mark DEALER RATER (logo) under Application no. 3553709 in class 35 and 42 before the Indian Trade Marks Office in May, 2017.
4. Respondent registered the <cardealerrater.com> domain name on October 8, 2015.
5. Respondent filed trademark applications for the mark “CAR DEALER RATER.COM (stylized)” before the Indian Trade Marks Office on December 27, 2016.
6. The website at the disputed domain name displayed Complainant’s DEALERRATER logo design and content from the Complainant’s <dealerrater.com> website, including copying the “Opt Out” portion of the privacy policy and a hyperlink directing visitors to Respondent’s website to Complainant’s website.
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.
Complainant contends that it established rights in its DEALERRATER mark through its registration of the mark with the USPTO (e.g., Reg. No. 3,885,725, registered Dec. 7, 2010). See Compl. Ex. B. Registration of a mark with a trademark authority, such as the USPTO, confers rights in a mark. See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”).
Respondent claims that Respondent’s rights in the disputed domain name predate Complainant’s rights in the DEALERRATER mark because Complainant’s registration of the DEALERRATER mark was not registered in Respondent’s resident country, India, until 2017.
However, the Panel finds that the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element. See ¶ 1.1.2, WIPO Jurisprudential Overview 3.0 stating (Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.). See also Dollar Thrifty Automotive Group, Inc. v. Potda, FA1500086 (Forum June 29, 2013) (“Complainant has rights in its DOLLAR mark under Policy ¶ 4(a)(i) through trademark registrations with the USPTO . . . . Although Respondent is located in India, Complainant may assert global rights in its mark as a result of its USPTO registration pursuant to Policy ¶ 4(a)(i).”) and KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of Policy ¶ 4(a)(i) whether the complainant’s mark is registered in a country other than that of the respondent’s place of business). As such, the Panel holds that Complainant established rights in the DEALERRATER mark under Policy ¶ 4(a)(i).
Respondent argues that its registration of the <cardealerrater.com> domain name predates Complainant’s alleged rights in the mark. The Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark(s) and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Next, Complainant contends that Respondent’s <cardealerrater.com> domain name is confusingly similar to Complainant’s DEALERRATER mark because it merely adds the generic term “car” and the gTLD “.com.” The addition of a generic term and a gTLD do not negate confusing similarity between a disputed domain name and a mark. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel concludes that Respondent’s <cardealerrater.com> domain name is confusingly similar to Complainant’s DEALERRATER mark.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its DEALERRATER mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <cardealerrater.com> domain name lists “SHIKHER DUBEY” as the registrant. See Amend. Compl. Ex. A. Therefore, the Panel concludes that Respondent is not commonly known by the <cardealerrater.com> domain name.
Further, Complainant alleges that Respondent uses the disputed domain name to resolve to a website that provides services that are identical to those offered at Complainant’s website. Use of a domain name to resolve to website that competes with a complainant’s business or copies a complainant’s own website may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Complainant alleges that screenshots indicate that the <cardealerrater.com> website offers services that are identical to and compete with Complainant’s business. Compare Compl. Ex. C (Screenshots of Complainant’s website) with Ex. E (Screenshots of Respondent’s website). Further, Complainant contends that Respondent’s website features a logo that looks substantially similar to Complainant’s DEALERRATER logo as well as information copied from Complainant’s website. Id. Therefore, the Panel finds that Respondent used the disputed domain name to offer services that compete with Complainant’s business and holds that Respondent failed to use the domain name within the parameters of Policy ¶ 4(c)(i) or (iii).
Given the considerations above, the Panel finds that Complainant has made out a prima facie case. As the onus thus shifts to Respondent, the Panel must now see if Respondent has rebutted the prima face case and shown that it has a right or legitimate interest in the disputed domain name.
Respondent contends that it filed trademark applications for the mark “CAR DEALER RATER.COM (stylized)” before the Indian Trade Marks Office on December 27, 2016. It further contends that on the date of creation of the Respondent’s website www.cardealerrater.com and even on the date of filing of the application for Car Dealer Rater.com (stylized), the Complainant neither had any presence in India nor a trademark registration /application for Complainant’s mark “Dealerrater” in India or in the knowledge of Indian customers or members of trade. Respondent continues to argue that although Complainant makes baseless claims like the Respondent is not generally known by its domain name; and the Respondent has copied several pages/its logo design and the overall concept of its website, Complainant’s contentions are frivolous and untenable considering the look and feel as well as content of the two websites is substantially different as on the date of filing the complaint viz. May 31, 2018 exhibited vide Annexure H to this Response. It is further submitted that the Respondent has already placed on record substantial documentary evidence in support of its use of its website www.cardealerrater.com, knowledge, promotion and reputation thereof in the Indian market by way of preceding Annexes to this Response. Respondent argues that it has invested more than $100,000 in the promotion and advertisement of its website and the website is the first and exclusive website of its kind in India. Further, as of the filing date of this UDRP action, Respondent’s and Complainant’s website are substantially different.
The Panel notes that Complainant has used its DEALERRATER mark on its <dealerrater.com> website throughout the world, including in India, since 2003 — i.e., long prior to Respondent’s registration of the disputed domain name on October 8, 2015, or Respondent’s purported filing of its trademark application for CARDEALERRATER in India on December 27, 2016. See Complainant’s Exhibit H, Declaration of Brad Walker at ¶ 2. The Panel further notes that Complainant’s website was temporarily inaccessible to consumers in India from May 16, 2016, to March 14, 2017, due to a distributed denial-of-service (“DDOS”) attack. With the exception of that short period of time, <dealerrater.com> website has been continuously accessible to consumers in India since 2003. See Complainant’s Exhibit H, Declaration of Brad Walker at ¶¶ 2, 3.
Complainant alleges that screenshots indicate that the <cardealerrater.com> website offers services that are identical to and compete with Complainant’s business. Compare Compl. Ex. C (Screenshots of Complainant’s website) with Ex. E (Screenshots of Respondent’s website). Complainant contends that Respondent’s website features a logo that looks substantially similar to Complainant’s DEALERRATER logo as well as information copied from Complainant’s website. The Panel notes that Respondent allegedly made changes to its website at the disputed domain name after receiving Complainant’s August 30, 2016 cease-and-desist letter. However, the Panel finds that such a change after receiving Complainant’s cease-and-desist letter does not justify Respondent’s rights or legitimate interests in the disputed domain name.
As the Panel finds that Respondent has failed to rebut the prima facie case against it, it concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent attempts to disrupt Complainant’s business by diverting Internet users to Respondent’s competing website. Use of a domain name to disrupt a complainant’s business may evidence bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”). As previously mentioned, Complainant alleges that screenshots of the <cardealerrater.com> website indicate that the site features services and information that directly compete with Complainant’s business. Compare Compl. Ex. C with Ex. E. Therefore, the Panel holds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iii).
Further, Complainant alleges that Respondent attempts to create confusion with Complainant’s DEALERRATER mark to attract Internet users and commercially benefit. Use of a domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein may evidence bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant alleges that screenshots indicate that the disputed domain name’s website features commercial content that directly competes with the services offered at Complainant’s website. See Compl. Ex. E. Therefore, the Panel concludes that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Respondent contends that Complainant has concealed the material fact of having sent the Respondent a letter dated August 30, 2016 objecting to the then look and feel of the Respondent’s website www.cardealerrater.com.
Complainant rebuts that Respondent’s claim Complainant’s failure to provide its August 30, 2016 letter somehow constitutes concealing of a material fact is without merit because (a) the transmission of a cease-and-desist letter is not a prerequisite to proving the elements of a UDRP complaint; and (b) the letter supports a finding that Respondent lacks a legitimate interest in the disputed domain name and registered and is using the disputed domain name in bad faith because it conclusively demonstrates that Respondent was aware of Complainant’s <dealerrater.com> website and DEALERRATER logo design mark long before Respondent received the letter on August 30, 2016.
The Panel agrees with Complainant and finds that Respondent’s claim is without merit.
Respondent appears to argue that because it allegedly made changes to its website at the disputed domain name after receiving the August 30, 2016 letter, and Complainant never sent a follow-up demand, Complainant’s current UDRP complaint should be dismissed on account of an equitable defense such as laches. Respondent asserts that Complainant has “tainted hands” or, presumably, that it has meritorious grounds for the equitable defense of unclean hands, due to the fact that Complainant did not attach the August 30, 2016 letter to its initial filing.
Complainant rebuts that the equitable defenses of laches, estoppel, and acquiescence are inapplicable to UDRP proceedings. Complainant further rebuts that the UDRP does not expressly authorize such a defense and that Respondent fails to cite a single case in which a panel has denied a UDRP complaint based on unclean hands. Complainant likewise has not found any such decisions. Complainant cites UDRP precedents in support of its rebuttals: Disney Enters. Inc. v. Meyers, FA697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy.”); Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defence of laches has no application.”); Drown Corp. v. Premier Wine & Spirits, FA616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); Caterpillar Inc. v. Domain Admin / Domain Privacy Guard Sociedad Anónima Ltd., FA1782231 (Forum May 16, 2018) (“The Panel points out that Complainant apparently waited nearly 20 years to bring this claim. This Panel, however, lacks the power of laches and may not dismiss this case solely on the fact that Complaint delayed too long. In addition, the delay, however long, here might be justifiable as the harm is continuing and ongoing.”); Papa John’s Int’l, Inc. v. Pratap, FA 1427509 (Forum Mar. 20, 2012) (“Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements.”).
The Panel agrees with Complainant and finds that the equitable defenses of laches, estoppel, and acquiescence are without merit.
Respondent states that “the documents filed by Complainant cannot be relied upon as the same appear to be fabricated.” Complainant rebuts Respondent’s allegations to the effect that Respondent provides no evidence to support this serious accusation. Complainant contends that Complainant and its counsel take exception to Respondent’s unsupported accusation to the effect that Complainant created fake documents and filed them with its Complaint; as active members of the bar of the State of Illinois, Complainant’s counsels have an ethical duty of candor before any judicial or administrative body before which they practice, and they did not breach this duty in this matter; significantly, as explained above, the allegations in the Amended Complaint that Respondent copied material directly from Complainant’s DealerRater.com website are supported by evidence submitted by Respondent himself: most notably, Complainant’s aforementioned August 30, 2016, demand letter; Respondent both affirms the authenticity of this letter by attaching it as Annexure D to his Response and does not dispute the accuracy of the claims made in this letter; and Respondent’s evidence therefore supports the veracity of the documents submitted by Complainant in this proceeding.
Respondent further asserts that the documents submitted by Complainant with its Complaint “can only be relied upon if the same are proved before the Court of law after conducting a trial which includes examination of the documents.”
Complainant rebuts that Respondent is incorrect as a matter of law. The Rules for Uniform Domain Name Dispute Resolution Policy expressly provide that a complainant may submit documentary and other evidence via annexes to the complaint. See UDRP Rules ¶3(b)(xiv). Respondent itself submitted numerous documents in precisely the same manner as Complainant — i.e., as Annexes to its filing — notwithstanding Respondent’s erroneous assertion that Complainant’s documents cannot be relied upon because they have not been examined by a court after trial. Complainant avers that nevertheless attached are declarations from Complainant’s counsel in the United States and India (a) authenticating the documents attached to the Amended Complaint that demonstrate Respondent’s copying of material from Complainant’s DealerRater.com website on his website at the disputed domain name, and (b) confirming that Complainant did not fabricate any documents attached to the Amended Complaint or information contained in the Amended Complaint. See Exhibits I and J, Declarations of Jason Koransky and Maidini Phul, respectively.
The Panel notes that Respondent provides no evidence to support its accusation in this regard. Furthermore, the Panel duly notes Complainant’s rebuttals against Respondent’s allegations and finds that Respondent’s allegations are without merits.
Reverse Domain Name Hijacking
Respondent alleges that Complainant has acted in bad faith and is engaging in reverse domain name hijacking by initiating this dispute. Respondent contends that Complainant is attempting to deprive Respondent, the rightful, registered holder of the <cardealerrater.com> domain name, of its rights to use the disputed domain name. Respondent alleges that Complainant had knowledge of Respondent’s rights in the disputed domain name as Complainant had previously written to Respondent requesting Respondent discontinue use of the <cardealerrater.com> domain name in August 2016. See Resp. Annex D. Further, Complainant’s <dealerrater.com> website was not available in Respondent’s country, India, nor was its mark registered in India until 2017. See Resp. Annexes E & G.
Complainant rebuts that it has not engaged in reverse domain name hijacking: The evidence in this case conclusively demonstrates that Respondent was not only aware of Complainant’s rights in DEALERRATER, but also directly targeted and copied Complainant’s <dealerrater.com> website prior to registering and using the disputed domain name. Moreover, Respondent cannot demonstrate reverse domain name hijacking because Complainant has satisfied the requisite elements of its UDRP claim.
As the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), it determines that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cardealerrater.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 6, 2018
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