Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

1. Parties

The complainant is eAuto, Inc., a Texas corporation, having its principal place of business at Dallas, Texas, United States. The respondent is E Auto Parts, Inc., located in Jacksonville, Florida, United States.

2. Domain Name and Registrar

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

3. Procedural History

Complainant initiated this proceeding by filing a complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 2, 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 March 8, 2000. Federal Express has confirmed that the Complaint was delivered to persons at both the address provided in Respondent’s domain name registration and the address for Respondent’s technical contact.

On March 8, Complainant filed an Amendment to the Complaint. Because the amendment was filed at the same time as the commencement of this proceeding, and because Respondent had a fair opportunity to respond to the amendment, the Panel elects to accept and consider this submission. See Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000).

On March 27, 2000, Respondent submitted its Response to the Complaint. On March 31, 2000, the Center appointed David H. Bernstein as the sole panelist in this matter. No further communications have been received from the parties.

4. Factual Background

Complainant states that it 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 e-mail lists. This Internet site was registered to the founder of Complainant on July 15, 1995, and was assigned to Complainant on August 29, 1997. Complainant also owns the domain name eauto.net, which it registered on January 31, 2000.

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.

Respondent states that it is a supplier of used auto parts to wholesale and retail markets. Respondent has been in the auto parts business since 1985, and has been supplying its parts nationally and internationally since 1992. Respondent originally did business under the name European Auto Parts, but in 1992, as it expanded its parts business beyond the European car market, it abbreviated its business name to E Auto Parts and E Auto. Respondent officially changed its corporate name from European, Inc. to E Auto Parts, Inc. in 1997.

On September 17, 1997, Respondent registered the domain name eautoinc.com. The Internet site at www.eautoinc.com offers auto and truck parts, at wholesale and retail prices, and features a searchable inventory database covering a range of parts from car and truck models over the last fifty years.

On October 1, 1997, Complainant’s attorney sent Respondent a cease and desist letter regarding Respondent’s use of the domain name eautoinc.com. Respondent did not respond to this letter. On March 7, 2000, several days after it had invoked the Policy and filed the Complaint, Complainant received an e-mail message from a consumer that was intended for Respondent. That e-mail message was addressed to rct@eauto.com rather than to rct@eautoinc.com.

5. Parties’ Allegations

Complainant alleges that Respondent’s registration and use of the domain name eautoinc.com violates its rights in its trademark EAUTO and its corporate name eAuto, Inc. Specifically, Complainant alleges that the domain name eautoinc.com is confusingly similar to the Mark and its corporate name and, given that both parties provide information and services related to auto parts, Respondent’s use of this domain name is likely to cause consumer confusion. Complainant cites the e-mail message that Respondent’s customer mistakenly sent to Complainant instead of Respondent as persuasive evidence that confusion not only is likely, but in fact is occurring. Complainant further alleges that Respondent has no legitimate interest in the domain name eautoinc.com because Respondent registered this domain name twenty months after Complainant’s first use of the Mark, seven months after Complainant’s federal registration of the Mark, and more than two years after Complainant’s registration of the domain name eauto.com. Finally, Complainant alleges that Respondent acted in bad faith in registering and using the domain name eautoinc.com because (i) this domain name already has caused consumer confusion and is likely to cause more confusion in the future, and (ii) Respondent registered this domain name notwithstanding its likely knowledge of Complainant’s own registration and use of the EAUTO trademark and the domain name eauto.com.

In its defense, Respondent alleges that its registration and use of the domain name eautoinc.com is not confusingly similar to the mark EAUTO or the domain name eauto.com. Specifically, Respondent (i) distinguishes the auto parts services it provides on its Internet site from the Internet portal services that Complainant provides on its site, and (ii) claims that EAUTO is a generic term that the U.S. Patent and Trademark Office should not have registered. As evidence of its legitimate interest in the eautoinc.com domain name, Respondent asserts that it (i) used the names E Auto and E Auto Parts in connection with its auto parts business for more than five years before it received Complainant’s 1997 demand letter, and used the domain name eautoinc.com for several weeks before it received Complainant’s demand letter, and (ii) registered the domain name eautoinc.com because it was closely related to the business and business name Respondent had been associated with for the previous twelve years. Lastly, Respondent refutes Complainant’s allegations of bad faith by asserting that (i) the fact that its customer misdirected an e-mail message to Complainant’s Internet site shows "that consumers recognize EAP [Respondent] as opposed to Complainant," and (ii) at the time it registered its domain name it had no knowledge of Complainant’s eauto.com business or Internet site.

6. Discussion and Findings

Paragraph 4(a) of 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.

As this Panel previously held in EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., Case No. D2000-0047 (WIPO Mar. 24, 2000), and EAuto, L.L.C. v. EAuto Parts, Case No. D2000-0096 (WIPO Apr. 9, 2000), the mark EAUTO is entitled to a rebuttable presumption of priority and distinctiveness because it has been registered by the U.S. Patent and Trademark Office. Here, Respondent has made a strong showing to rebut that presumption, including with the factual assertion that Respondent used the mark E Auto in commerce long before Complainant and with the legal argument, based on Continental Airlines, Inc. v. United Air Lines, Inc., 53 U.S.P.Q. 2d 1385 (T.T.A.B. 1999) (E-TICKET a generic mark), that EAUTO is merely generic. If, in fact, EAUTO were a generic mark, or if Respondent were found to have priority, Complainant would have no trademark rights to assert this proceeding.

The Panel need not reach that issue because, in any event, it is clear that Respondent has a legitimate interest in this domain name. Respondent has submitted persuasive evidence that it has used the business names E Auto Parts and E Auto since 1992, well before Claimant registered its domain name, and that it chose this name as an obvious abbreviation of its former name European Auto Parts. Therefore, the record in this case convincingly shows that Respondent has made a legitimate use of the domain name eautoinc.com in connection with its auto parts business, which alone is sufficient to support judgment for Respondent in this matter.

7. Decision

The Panel finds that Respondent has rights and legitimate interests in respect of the domain name eautoinc.com. Accordingly, the Panel concludes that the domain name eautoinc.com should not be transferred to Complainant eAuto, Inc.

David H. Bernstein
Presiding Panelist

Dated: April 13, 2000