Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Trader Publishing Company, a corporation organized under the laws of the State of Delaware with its principal place of business located in Norfolk, Virginia, United States of America.

Represented by: Judith A. Powell, Esq., Kilpatrick Stockton LLP, Suite 2800, 1100 Peachtree Street, Atlanta, Georgia 30309-4530, United States of America.

The Respondent is DB Palmer Associates, 508 East Jura Circle, Payson, Arizona 85541, United States of America.

Represented by: Ari Goldberger, Esq., ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003, United States of America.

The domain name at issue is <automartusa.com>.

The Registrar is Go Daddy Software, 14455 North Hayden Road, Suite 219, Scottsdale, AZ 85260, United States of America.

The Complaint was received by the WIPO Arbitration and Mediation Center ("the Center") by e-mail on December 26, 2001, and in hard copy on January 4, 2002. The Center has verified that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. The payment required for this proceeding was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

Respondent was properly notified of the Complaint according to Paragraph 2(a) of the Rules. Respondent was informed that the last day for filing its Response was January 29, 2002. On January 29, 2002, Respondent contacted the Center via email and requested to extend the due date for filing its Response to February 4, 2002. The Center granted Respondent’s request for extension of time. The Response was received by the Center by e-mail on February 5, 2002, and in hard copy on February 8, 2002.

Complainant’s Request for Permission to Submit a Reply to Respondent’s Response was received by the Center by e-mail on February 7, 2002, and in hard copy on February 12, 2002.

On or about January 8, 2002, before the commencement of the subject administrative proceeding, the registration of the <automartusa.com> domain name expired. On or about February 22, 2002, a third party registered the <automartusa.com> domain name with a different registrar, Go Daddy Software, Inc. On or about March 21, 2002, the new registrar, Go Daddy Software, Inc., changed its domain profile to reflect that Respondent is the registrant of the domain name at issue.

The Panel has been properly constituted. The undersigned Sole Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On March 15, 2002, the Panelist exercised its discretion, pursuant to Rule 12 of the Rules, granting the Complainant’s request to submit its reply to the Respondent’s Response. The Complainant’s Reply was received by the Center by email on March 20, 2002. The date scheduled for the issuance of the Panel’s Decision, pursuant to the request of the Sole Panelist, is March 29, 2002.

Complainant claims to own the United States trademark and service mark registrations for the mark AUTO MART, registered December 3, 1989, and December 21, 1999, respectively.

Complainant’s predecessor first used the AUTO MART mark at least as early as 1979. Complainant, its predecessors and affiliates have used the AUTO MART mark continuously since that time in connection with magazines of vehicle advertisements placed by individuals and businesses. These publications are distributed throughout the continental United States.

Since April 1997, Complainant and its affiliates have extended their use of the AUTO MART mark to provide advertising for others and information about automobiles and related products and services by online electronic communications network. Complainant has featured the AUTO MART magazine on Complainant’s website of <traderonline.com> and utilized the <automart.com> domain name to feature vehicle advertisements or to point to other websites operated Complainant and its affiliates. These websites feature a number of Complainant’s publications and services, including vehicle advertisements, such as shown on Complainant’s <autotrader.com> website.

Respondent is an entrepreneur who has established various businesses, including a solar energy company, which he operated for 13 years in Hawaii and then sold. Respondent currently operates a publishing business called Financial Success Publishing.

On or about January 8, 2001, Respondent registered the <automartusa.com> domain name to be used for a planned partnership with a business called AUTO MART USA, a licensed California automobile dealership, owned by Respondent’s friend, Mr. Ernest Eagan. The plan was to use the Internet to advertise AUTO MART USA’s cars. Respondent also registered <truckmartusa.com>, <truckcountryusa.com>, and <musclecarmart.com> in connection with this business plan. Respondent planned to launch the websites after the Internet had matured to the point where consumers in the local area were comfortable purchasing cars online. To date this has not yet occurred.

In November 2001, Respondent had an opportunity to become involved and profit from a business venture involving international currency trading, which required him to raise funds. To help raise the necessary funding, Respondent sought to the sell the domain name at issue and some other descriptive domain names, with the permission of his partner, Mr. Eagan. One of the parties that Respondent contacted was Complainant. Respondent has assessed that the domain name at issue is worth $100,000, but was willing to sell the domain name for $20,000.

In response to the solicitation, Complainant notified Respondent of Complainant’s rights, requested Respondent to cease and desist from using the <automartusa.com> domain name, and requested a transfer of the domain name at issue to Complainant. By its letter dated December 18, 2001, Respondent refused to transfer the domain name at issue to Complainant. Respondent also alleged that he would sell the domain name to a third party unless Complainant made Respondent "a fair offer for these powerful and valuable domain names" by December 20, 2001.

Complainant contends that the <automartusa.com> domain name is confusingly similar to Complainant’s registered trademark and service mark AUTO MART. Complainant also contends that Respondent has no right or legitimate interest with respect to the domain name at issue because Respondent lacks previous legitimate use of the domain name. Respondent has not previously done business under the name "Automartusa," or "Auto Mart USA," or variations thereof. Nor does Respondent have authorization from Complainant to use the AUTO MART mark.

Complainant further contends that the domain name at issue was registered and is being used in bad faith for the following reasons. Complainant reasonably believes that Respondent, prior to its adoption and use of the domain name at issue was aware that Complainant was the owner of the AUTO MART mark. Moreover, a single registration on the Principal Register is considered constructive notice of the registrant’s claim of ownership under United States Trademark Law. Respondent has effectively admitted his knowledge of Complainant’s rights in the AUTO MART mark by stating that the <automartusa.com> domain name is "right up there with AutoMart.com [and] AutoTrader.com," two domain names owned by Complainant. Respondent is not using the domain name at issue to provide any goods or services. Respondent has sought to sell the domain name at issue for a profit. Respondent refused to transfer the domain name at issue to Complainant and threatened to sell the domain name to a third party.

Complainant requests that the <automartusa.com> domain name be transferred to Complainant.

Respondent asserts that the <automartusa.com> domain name is not identical or confusingly similar to Complainant’s trademark in which Complainant has enforceable rights. AUTO MART is a common descriptive term subject to substantial third party use, including on 115,000 web pages unrelated to Complainant, and by over 100 U.S. businesses. A term subject to such substantial third party use is weak; therefore, the likelihood of confusion is reduced.

Respondent also asserts that Respondent has rights and a legitimate interest in the domain name at issue. Respondent planed to use the domain name at issue in connection with the advertising of automobiles sold by Auto Mart USA, owned by Respondent’s partner. Respondent is commonly known by the domain name at issue through Respondent’s association with Auto Mart USA. The domain name at issue incorporates nothing more than a common descriptive term.

Further, Respondent asserts that Complainant has not demonstrated that the domain name at issue was registered and is being used in bad faith. Respondent claims that there is no evidence that Respondent registered the <automartusa.com> domain name with the intent to sell it to Complainant, to disrupt its business, to prevent it from registering its trademark, or to confuse consumers. Moreover, Respondent did not have knowledge of Complainant’s business or trademark at the time Respondent registered the domain name at issue.

Respondent requests that the subject Complaint be dismissed.

For the Complainant to succeed and to obtain the remedy under Paragraph 4(i) of the Policy, the Panel must, under Paragraph 4(a) of the Policy, be satisfied with all three elements as follows:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

In connection with Paragraph 4(a)(i) of the Policy, the Panel finds that the domain name <automartusa.com> is identical to or confusingly similar to Complainant’s registered trademark and service mark AUTO MART.

Respondent asserted that Complainant’s trademark and service mark AUTO MART is a common descriptive term and that the geographic descriptive term USA distinguishes the domain name at issue and the AUTO MART mark. The Panel, however, finds that Complainant has provided sufficient evidence to prove its ownership of the United States trademark and service mark registrations for the AUTO MART mark. It would be inappropriate for the Panel to inquire beyond the presumed validity of such registered marks established by action of the United States Patent and Trademark Office under the United States trademark law. Moreover, the term USA following the AUTO MART in the domain name at issue is a descriptive term and thus has no legal significance. Therefore, for purposes of Paragraph 4(a)(i) of the Policy, the domain name at issue is identical to or confusingly similar to Complainant’s registered marks AUTO MART.

In connection with Paragraph 4(a)(ii) of the Policy, Paragraph 4(c) of the Policy provides a respondent with the following guidance as to how to demonstrate its rights to and legitimate interests in the domain name in response to a complaint:

Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name:

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark.

Pursuant to the above guidelines, the Panel finds that Respondent has satisfied the circumstance enlisted under Paragraph 4(c)(i) of the Policy. Although Complainant claims to own the registered mark AUTO MART, the AUTO MART mark is nevertheless used by over 100 U.S. businesses and appears on 115,000 web pages unrelated to Complainant. Respondent, through its partnership with Mr. Eagan, used the name "Auto Mart USA" in connection with an automobile dealership prior to the notice of the subject dispute. The automobile dealership appears to be a bona fide offering of services. Therefore, Respondent has demonstrated its rights to and legitimate interests in the domain name at issue under Paragraph 4(c)(i) of the Policy.

In addition, the Panel finds that Respondent, by virtue of its partnership with Mr. Eagan, is known by the domain name at issue. Accordingly, Respondent satisfies the circumstance enlisted under Paragraph 4(c)(i) of the Policy. Consequently, the Panel finds that Respondent has proved its rights to and legitimate interests in the domain name at issue under Paragraphs 4(c)(i) and 4(c)(i) of the Policy. Accordingly, Complainant failed to meet Paragraph 4(a)(ii) of the Policy and thus can not succeed.

The Panel must nevertheless proceed with the consideration under Paragraph 4(a)(iii) of the Policy to complete the analysis pursuant to Paragraph 4(a) of the Policy. In connection with Paragraph 4(a)(iii) of the Policy, the Panel notes that he will be satisfied only if Complainant proves that the domain name registration was undertaken in bad faith and that the circumstances of the case are such that Respondent is continuing to act in bad faith. See WIPO Case No. D2000-0003.

In this case, the Panel finds that Complainant failed to prove that Respondent has registered the domain name at issue in bad faith. The Panel recognizes Complainant’s ownership of the mark AUTO MART and widespread and long-standing marketing and distribution of Complainant’s publication AUTO MART. The Panel also recognizes that the AUTO MART mark is being used by over 100 U.S. businesses and appears on 115,000 web pages unrelated to Complainant. The wide third-party use of the AUTO MART mark, as well as the descriptive nature of the registered marks, negates the likelihood that Respondent was aware of Complainant’s registered marks. Moreover, Respondent has shown that the domain name at issue was registered for advertising Respondent’s partner’s automobiles for sale on Internet. Therefore, Complainant failed to prove that the domain name at issue has been registered in bad faith.

With respect to the use of the domain name at issue, Complainant asserted that Respondent is not using the domain name at issue, but offered to sell the domain name for an amount that substantially exceeds Respondent’s out of pocket expenses associated with the domain name registration. The Panel finds that the non-use of the domain name at issue does not justify the high value of $100,000 that Respondent assessed or the high amount of $20,000 that Respondent sought during the sale of the domain name. Therefore, the domain name at issue is being used in bad faith.

In view of all the above findings, the Panel finds that Complainant failed to satisfy both requirements of Paragraph 4(a)(iii) of the Policy and thus cannot succeed.

Based on the above findings, the Panel concludes that (i) the domain name at issue is either identical or confusingly similar to Complainant’s registered trademark and service mark AUTO MART; (ii) Respondent has rights or legitimate interest in the domain name at issue; and (iii) Complainant failed to prove that Respondent has registered the domain name in bad faith, but the domain name is being used in bad faith. Because Complainant failed to meet Paragraph 4(a) of the Policy, the Panel orders that the Complaint be dismissed.