Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainant is: TPI Holdings Inc., a company incorporated in the State of Delaware, U.S.A., with offices at P.O. Box 2576, Norfolk, Virginia 23501, U.S.A. Complainant is represented by: Judith A. Powell, Esq., Kilpatrick Stockton, LLP, Suite 2800, 1100 Peachtree, Atlanta, Georgia 30309-4530, U.S.A.

The Respondent is: Autobuyline, 5859 Kanan Road, Agoura Hills, California 91301-1651, U.S.A.

The domain names in dispute are: "autotraderusa.com", "boattraderusa.com", "yachttraderusa.com", "cycletraderusa.com".

The registrar for the domain name "autotraderusa.com" is: Network Solutions, Inc., (NSI) 505 Huntmar Park Drive, Herndon, Virginia 22070, U.S.A.

The registrar for the domain names "boattraderusa.com", "yachttraderusa.com" and "cycletraderusa.com" is Register.com, located at 575 8^th Avenue, 11^th floor, New York, New York 10018, U.S.A.

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on November 9, 2000. On November 21, 2000, the Center requested that the registrar, NSI, check and report back on the registrant for the domain name "autotraderusa.com". Also on November 21, 2000, NSI reported to the Center that the registrant was the Respondent.

On November 21, 2000, the Center requested that the registrar for the disputed domain names, "boattraderusa.com", "yachttraderusa.com" and "cycletraderusa.com", that is Register.com, check and report back on who the registrant for these domain names was. Also on November 21, 2000, Register.com reported the registrant was the Respondent.

On November 22, 2000, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began. Respondent did not file a response, and on December 15, 2000, was declared in default.

The Administrative Panel submitted a Declaration of Impartiality and Independence on January 2, 2001, and the Center proceeded to appoint the Panel on January 5, 2001.

The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.

This Decision is due by January 19, 2001.

Complainant is a company engaged in the business of offering a market where clients can sell and buy merchandise such as autos, yachts, boats and cycles. This service is offered through printed magazines as well as on the Internet. Complainant also sells advertising and endeavors to provide additional information for the products for which it offers a market.

Respondent registered the disputed domain names beginning on December 29, 1998.

Respondent attempts to offer the same services as Complainant at the disputed web sites. Complainant is contesting Respondent’s right to use the disputed domain names, and seeks to have the disputed domain names transferred from Respondent to Complainant.

Complainant’s Contentions:

- Complainant is the owner of the trademarks on which are based the disputed domain names, "autotraderusa.com", "boattraderusa.com", "yachttraderusa.com", and "cycletraderusa.com".

- Complainant registered and used in commerce the underlying trademarks long before Respondent registered the disputed domain names.

- Respondent’s disputed domain names are confusingly similar to Complainant’s trademarks.

- Confusion is likely to result because Respondent is using the disputed domain names to offer the same services as Complainant.

- Because Respondent was well aware of Complainant’s trademark rights at the time it registered the disputed domain names, Respondent can not have legitimate rights or interests in the disputed domain names.

- Respondent was in bad faith when it registered the disputed domain names because it had actual and constructive notice of Complainant’s trademark registrations.

- "Framing" a competitor’s website is trademark infringement.

- Respondent has caused actual confusion among Complainant’s customers. Thus, Respondent is attempting to derive economic benefit from the good will created over the years by Complainant. Respondent has at times answered potential client inquiries in the name of Complainant, thus "impersonating" Complainant.

- The disputed domain names should be transferred to Complainant.

Respondent’s Contentions:

- The Respondent is in default in this proceeding.

In order for Complainant to prevail and have the disputed names transferred to itself, Complainant must prove the following (the Policy, paragraph 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

The Complainant has produced exemplary copies of its trademark registrations on the principal register of the United States of America that involve the disputed domain names, "autotraderusa.com", "boattraderusa.com", "yachttraderusa.com" and "cycletraderusa.com". These trademarks are: "Auto Trader", no. 1,247,037, registered August 2, 1983, in international class 16 for periodic publications; "Boat Trader", no. 1,208,249, registered September 14, 1982, also in international class 16; "Yacht Trader", no. 1,648,145, registered June 18, 1991, also in int. class 16; and "Cycle Trader", no. 1,627, 016, registered December 11, 1990, also in int. class 16 (Complaint, Exhibit D).

The trademarks "autotrader", "boattrader", "cycletrader" and "yachttrader" are all descriptive, but they have been registered and remain validly registered on the principal register of the United States Patent and Trademark office. The Panel accepts the United States registrations as prima facie evidence of trademark validity. The Panel notes that the Complainant has provided ample proof of having fortified the trademarks through years of use to sell goods and services.

It is well settled in ICANN proceedings that the addition of a geographic name, such as that of the country "usa", without more, can not serve to save an identical or confusingly similar trademark from remaining same. The Panel believes this is so in this Case and thus finds Respondent’s disputed domain names are confusingly similar to Complainant’s trademarks (see for example eBay Inc. v. GL Liadis Computing Ltd., WIPO Case No. D2000-1463, January 10, 2001, discussing the domain names "ebaygreece.com" and "ebayturkey.com").

Complainant disavows any business relationship with Respondent, to say nothing of a relationship that would allow Respondent legally to use the trademarks contained in the disputed domain names. Respondent is in default and thus has made no attempt to show it has a legitimate business interest in the domain names or that it was attempting to make fair use of the names (the Policy (4 (c)).

Accordingly, the Panel finds the Respondent has no legitimate rights or interests in the disputed domain names.

Complainant has shown that Respondent had one main goal in mind when it registered and began operating websites using the disputed domain names: Respondent wanted to use Complainant’s notoriety and good will to derive revenue by selling the same types of goods and services. In fact, on at least one occasion, Respondent actually represented to one of Complainant’s customer’s that Respondent was the Complainant. This also is evident from the regularity with which Respondent framed Complainant’s home pages on the disputed domain name web sites. Such practices directly contravene the bad faith provisions in the Policy (4 (b)(iv)).

Of necessity, then, the Panel finds the Respondent registered and is using the disputed domain names in bad faith.

The Panel finds the Respondent, Autobuyline, registered domain names it knew to be confusingly similar to Complainant’s trademarks. And furthermore, the Respondent has no legitimate rights or interests in the disputed domain names and registered and was using them in bad faith. In keeping with the ICANN Policy, paragraph 4(i) and Rule (15), the Panel orders that the disputed domain names, "autotraderusa.com" registered with NSI; and "boattraderusa.com", "yachttraderusa.com" and "cycletraderusa.com" registered with Register.com all be transferred to the Complainant, TPI Holdings, Inc.

Dennis A. Foster
Sole Panelist