Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The complainant is eAuto, L.L.C., a limited liability company organized and existing under the laws of the State of Texas, having its principal place of business at Dallas, Texas, United States. The respondent is EAuto Parts, also of Dallas, Texas, United States.

The domain name at issue is eautoparts.com. This domain name is registered with Network Solutions, Inc.

The Complainant initiated this proceeding by filing a complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on February 24, 2000. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center notified Respondent of the commencement of this proceeding on February 29, 2000. Federal Express has confirmed that the Complaint was delivered to a person at the address provided in Respondent’s domain name registration.

Respondent did not submit any response within the twenty days provided. Accordingly, on March 22, 2000, the Center notified Respondent that it was in default, and, on March 24, 2000, appointed David H. Bernstein as the sole panelist in this matter. No further communications have been received from the parties.

Given the absence of a Response, the following facts are undisputed:

Complainant is in the business of offering a full range of automotive information to companies and individuals through its Internet site at www.eauto.com. Since January 15, 1996, Complainant’s Internet site has provided information and links to the Internet sites of manufacturers, distributors and retailers of auto parts and auto accessories, auto makers, auto dealers, automotive services, automotive news and events, automotive news groups and automotive email lists.

Complainant owns a United States trademark registration for the mark EAUTO (the "Mark"), Reg. No. 2,035,083, for "providing multiple-user access to a global computer information network for the transfer and dissemination of a wide range of information." This mark was registered to the founder of Complainant on February 4, 1997, and was assigned to Complainant on August 29, 1997.

Complainant alleges that its mark has acquired and enjoys substantial goodwill and a valuable reputation. Complainant also alleges that it has expended and continues to expend a significant amount of time and money to advertise, promote, and offer for sale its services under the Mark.

On August 19, 1997, Respondent registered the domain name eautoparts.com. Although the Internet site at www.eautoparts.com is not active at present (perhaps because of the pendency of this dispute), the site formerly advertised Respondent’s automotive maintenance and repair services.

On July 30, 1999, Complainant’s attorney sent Respondent a cease and desist letter regarding Respondent’s use of the domain name eautoparts.com. On August 4, Respondent, through its attorney, replied by denying that its domain name infringed any of Complainant’s intellectual property rights, but also stated that Respondent would be willing to consider an offer to purchase the name in order to reach an amicable resolution of the dispute. Complainant’s attorney wrote back on August 17, agreeing to pay Respondent for its domain name registration costs, but refusing to pay anything further to acquire the domain name. The parties exchanged another round of letters, with Complainant reiterating that it was willing to pay Respondent only for the reasonable costs it had incurred to acquire the domain name eautoparts.com.

Complainant alleges that Respondent’s registration and use of the domain name eautoparts.com violates its rights in its trademark EAUTO. Specifically, Complainant alleges that the domain name eautoparts.com is confusingly similar to the Mark and, given that both parties are in the automotive business, Respondent’s use of this domain name is likely to cause consumer confusion. Complainant further alleges that Respondent has no legitimate interest in the domain name eautoparts.com because (i) Respondent registered the domain name one and one-half years after Complainant’s first use of the Mark and six months after Complainant’s federal registration of the Mark, and (ii) Respondent’s domain name does not reflect the name of its corporate identity. Finally, Complainant alleges that Respondent acted in bad faith in registering and using the domain name eautoparts.com. Complainant argues that Respondent’s bad faith is proven by (i) its decision to register eautoparts.com notwithstanding its likely knowledge of Complainant’s own registration and use of eauto.com and the EAUTO trademark, (ii) its continued use of the domain name eautoparts.com after receiving notice from Complainant of its rights in the domain name eauto.com and in the Mark, and (iii) its offer to sell the domain name eautoparts.com to Complainant.

Given Respondent’s failure to file a Response in this case, the Panel accepts as true all the allegations of the Complaint. Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 24, 2000), § d. Respondent’s default does not, however, translate into an automatic ruling for the Complainant. To the contrary, the Complainant still must establish a prima facie showing that, under the Uniform Domain Name Dispute Resolution Policy (the "Policy"), it is entitled to transfer of the domain name. Because Complainant has failed to make the requisite prima facie showing in this case, the Panel declines to order transfer of the domain name.

The Policy provides that, to justify transfer of a domain name, a complainant must prove each of the following:

(1) that 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) that the Respondent has no rights or legitimate interests in respect of the domain name; and

3. that the Respondent has registered and has been using the domain name in bad faith.

Policy § 4(a).

For reasons identical to those set forth in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a King Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000), the Panel concludes that the domain name eautoparts.com is confusingly similar to the trademark EAUTO. That is because, like eautolamps.com, eautoparts.com incorporates in its entirety a mark that has been registered by the U.S. Patent and Trademark Office, and which thus is entitled to a rebuttable presumption of distinctiveness. Nevertheless, the mark EAUTO is on the weaker side of the range of distinctive marks.

The weakness of the EAUTO trademark makes it difficult for Complainant to argue that Respondent lacks a legitimate interest in the domain name eautoparts.com. That is because this domain name eautoparts.com is descriptive of a business that offers, through the Internet, information about or sales of automobile parts, and it is inappropriate to give Complainant a wide monopoly over all domain names, even descriptive ones, that incorporate the mark EAUTO. Thus, if an automotive-based business were to adopt this name for the purpose of describing an element of its business, and not for the nefarious purpose of causing confusion or diversion of business, then that would constitute a legitimate use.

As Complainant admits, "Respondent conducts business in the automotive parts industry." Complaint ¶ 9(M). Respondent’s website contained information on Respondent’s business of maintaining and repairing automobiles which, by necessity, includes the sale and installation of auto parts. Moreover, nothing in the printout of Respondent’s website suggested that Respondent was trying to cause confusion with Complainant’s eauto.com website or services. In these circumstances, and without the benefit of direct evidence of an illegitimate purpose (such as might be uncovered through traditional discovery, see EAuto, L.L.C. v. Triple S. Auto Parts), the Panel cannot conclude that Respondent has "no . . . legitimate interests in respect of the domain name." Policy § 4(a).

In light of Complainant’s failure to establish the absence of a legitimate interest, the Panel need not consider Complainant’s assertions of bad faith.

The Panel finds that Respondent has registered a domain name (eautoparts.com) identical or confusingly similar to Complainant’s trademark (EAUTO). Complainant, however, has failed to prove that Respondent has no rights or legitimate interests in respect of that domain name. Accordingly, the Panel concludes that the domain name eautoparts.com should not be transferred to Complainant eAuto, L.L.C.

David H. Bernstein
Presiding Panelist

Dated: April 9, 2000