Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Online Auto, Alpharetta, GA, USA ("Complainant"). The Respondent is Web Weavers International, Lancaster, PA, USA ("Respondent").

The domain name at issue is <onlineautos.com>, registered with Network Solutions, Inc.

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.

Judge Harold Kalina (Ret.) as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on May 8, 2001; the Forum received a hard copy of the Complaint on May 11, 2001.

On May 9, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <onlineautos.com> is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 16, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 5, 2001 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@onlineautos.com by e-mail.

A timely response was received and determined to be complete on June 5, 2001.

On June 13, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant states that it is the owner of a registered trademark, "ONLINE AUTO" and is the registered owner of the domain name "onlineauto.com" which incorporates the ONLINE AUTO trademark. ONLINE AUTO provides automotive services that involve working with automotive dealerships and consumers to facilitate the buying, selling, leasing, financing and insuring of both new and used vehicles. Complainant contends it is the senior user of the mark ONLINE Auto, and has been continuously using the mark in interstate commerce since 1995, first as dial-up bulletin board service (BBS), and subsequently as an operational web site since February, 1996. Complainant contends it has established itself as a well known and respected brand, servicing thousands of unique visitors daily through its web site with the domain name <onlineauto.com>. That during the past year, ONLINE AUTO has consistently tracked over 70,000 unique customers each month to the <onlineauto.com> web site, and that during the month of April, 2001, over 75,000 consumers visited the web site to utilize ONLINE AUTO’s services.

Complainant contends the domain name in dispute, <onlineautos.com> is confusingly similar to its own registered domain name <onlineauto.com>, which incorporates the ONLINE AUTO mark. Complainant contends Respondent should be considered as having no rights or legitimate interests in respect to <onlineautos.com> for the following reasons: 1) Respondent is not currently and has never been known by ONLINE Auto, and has made no commercial use of the mark other than to redirect from <onlineautos.com> to its competitive web site named AUTO BROWSER <autobrowser.com>. That this redirection creates confusion with consumers and clients, 2) the domain name <onlineautos.com> creates confusion with consumers and clients and harms the good will of ONLINEAUTO by redirecting customers to the Respondent’s web site <autobrowser.com> where Respondent apparently plans to offer, and is currently offering, services that are in the same industry and directly competitive with ONLINE AUTO, and 3) that Respondent is using <onlineautos.com> to take unfair advantage of the well established ONLINE AUTO mark for commercial gain, to misleadingly divert consumers to a competitive service, and to tarnish the ONLINE AUTO mark.

Complainant contends Respondent should be found to have registered the domain name in bad faith, and is using the domain name in bad faith for these reasons: 1) Complainant’s domain name <onlineauto.com> was well established using the ONLINE AUTO trademark and was in operation prior to the domain name in dispute, and that it is self-evident that Respondent in seeking to register this domain name would have recognized the existence of ONLINE AUTO and <onlineauto.com> due to the great similarity that exists between the two names; that it should be concluded that Respondent registered the domain name primarily for the purposes of disrupting the business of Complainant, 2) Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with its mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s web site and services on Respondent’s web site, and 3) Respondent has registered the domain name to prevent Complainant, the owner of the trademark, from reflecting the mark in a corresponding domain name. Complainant contends that Respondent has shown a pattern of conduct of registering domain names confusingly similar to well recognized trade marks.

B. Respondent

Respondent, to justify its claim of right and ownership in the domain name in dispute submitted copies of e-mail transmittals it had with Complainant during April, 2001. That correspondence reveals Complainant’s objection to Respondent’s use of the disputed domain name, but its willingness to trade up to five other registered names in exchange for Respondent assigning <onlineautos.com> to Complainant. At one point Complainant offered to purchase the domain name from Respondent for $500.00, which offer Respondent rejected. Respondent’s response to Complainant’s inquiries was, "We are not in the market actively seeking to trade domain names or sell <onlineautos.com>. That does not mean that it couldn’t be purchased"

Further, Respondent contends, "I can not even find any correct information regarding the domain name of <onlineauto.com>. Further more, until Mr. Britt (Complainant’s agent) contacted us, "we had no prior knowledge of his web system even being in existence". Respondent submits that until it has verification of Complainant’s ownership it will continue to contest this claim.

C. Additional Submissions

In response, Complainant filed with the panel copies of publications confirming that the <onlineauto.com> web site was, and is, operational as a complete online automobile shopping service since registration.

Complainant is the owner of the registered trademark ONLINE AUTO, and the registered owner of the domain name <onlineauto.com>. Complainant began using the marks in 1995, and early 1996, prior to Respondent’s May 26, 1996 registration of the disputed domain name <onlineautos.com>. Complainant has senior rights to the use of ONLINE AUTO and <onlineauto.com>. Complainant has established itself as a well known entity in its field of business activity. Complainant serves thousands of web site visitors daily. Respondent is not known by the disputed name, and has made no commercial use of the domain name <onlineautos.com> other than to divert visitors to its competitive web site <autobrowser.com>. Respondent’s actions in diverting visitors has created confusion with Complainant’s consumers and clients and disrupts Complainant’s operation.

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.

The domain name <onlineautos.com> is confusingly similar to the trademark ONLINE AUTO, and to the domain name <onlineauto.com>. The only difference is the addition of an "s" to the end of Complainant’s mark. See Cream Pie Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000) (finding that "the addition of an ‘s’ to the end of the Complainant’s mark, ‘Cream Pie’ does not prevent the likelihood of confusion caused by the use of the remaining identical mark. The domain name creampies.com is similar in sound, appearance, and connotation"). An Internet user would assume that the domain name is somehow affiliated with the Complainant. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

Respondent has not made a bona fide offering of goods or services in connection with the domain name, yet by redirection to another web site Respondent offers similar services in competition with Complainant, See American 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 a web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business").

There is no indication from the evidence before this Panel that the Respondent has ever been known by the said domain name so as to claim rights or legitimate interest in accordance with Paragraph 4(c) (ii) of the Uniform Dispute Resolution Policy.

Complainant registered the ONLINE AUTO mark prior to the registration of the domain name, and had been using the mark since 1995. Respondent did not register the domain name until May 20, 1996. See Household Int’l. Inc. v. Cyntom Enterprises, FA 95784 (Nat. Arb. Forum Nov. 7, 2000) ("Just as the employment of a well-known business name for no particular good reason undermines any claim to legitimate interest, so it may also support an inference of a bad-faith attempt to use the name to harass or exploit its legitimate owner…Respondent, if he ever was serious in the registration of this domain name, must have relied on the good chance he would attract Complainant’s customers"). Respondent is using the domain name by diverting traffic to a web site that competes directly with Complainant. See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant’s business and create user confusion); see also Southern Exposure v. Southern Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that Respondent registered the domain name in question to disrupt the business of the Complainant, a competitor of the Respondent).

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Therefore, it is ORDERED that the domain name onlineautos.com be transferred from Respondent to Complainant.